Kowalski v. Hawaii International Seafood, Inc. et al

Filing 311

Claim Construction ORDER. Signed by JUDGE HELEN GILLMOR on 3/31/2014. (gab, )CERTIFICATE OF SERVICEParticipants registered to receive electronic notifications received this document electronically at the e-mail address listed on the Notice of Electronic Filing (NEF). Participants not registered to receive electronic notifications were served by first class mail on the date of this docket entry

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF HAWAII

WILLIAM R. KOWALSKI; HAWAII
INTERNATIONAL SEAFOOD, INC.,
Plaintiffs,
vs.
ANOVA FOOD, LLC; ANOVA FOOD,
INC.; CLEARSMOKE TECHNOLOGIES,
LTD; and DOES 1-10,

Defendants.
______________________________
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Civil NO. 11-00795HG-BMK

CLAIM CONSTRUCTION ORDER
On October 26, 1999, Plaintiff William R. Kowalski was
issued United States Patent No. 5,972,401, entitled “Process
For Manufacturing Tasteless Super-Purified Smoke For Treating
Seafood To Be Frozen And Thawed.”
1 through 75.

The patent contains Claims

On November 16, 2010, Claims 1 and 67 were

cancelled.
On December 29, 2011, Plaintiffs Kowalski and Hawaii
International Seafood, Inc. filed the current suit for patent
infringement, false advertising and promotion pursuant to the
Lanham Act, and violation of state statutes.

Plaintiffs

allege that Defendants have processed, imported, offered to
sell, or sold food made with a process covered by Kowalski’s
1

patent.

Defendants Anova Food, LLC and Anova Food, Inc.

assert that they do not use a process that is covered by
Kowalski’s patent.
The Parties requested a claim construction hearing
pursuant to Markman v. Westview Instr., Inc., 517 U.S. 370,
372 (1996).

On February 25, 2014, the Court held a Markman

hearing on the construction of disputed terms in the patent.

PROCEDURAL HISTORY
On January 2, 2012, Plaintiffs William R. Kowalski and
Hawaii International Seafood, Inc. filed the First Amended
Complaint.

(ECF No. 6).

On October 11, 2013, Defendant Anova Food, LLC filed a
document entitled, “PROPOSED TERMS AND CLAIM ELEMENTS FOR
CONSTRUCTION.”

(ECF No. 224).

On November 1, 2013, Plaintiffs William R. Kowalski and
Hawaii International Seafood, Inc. filed a “LIST OF TERMS FOR
CONSTRUCTION.”

(ECF No. 231).

Also on November 1, 2013, Defendant Anova Food, Inc.
filed a “JOINDER IN DEFENDANT ANOVA, LLC’S PROPOSED TERMS AND
CLAIM ELEMENTS FOR CONSTRUCTION.”

(ECF No. 232).

On December 16, 2013, Plaintiffs filed a Claim
Construction Brief.

(ECF No. 245).

2

On December 30, 2013, Defendant Anova Food, Inc. filed a
Claim Construction Brief.

(ECF No. 250).

On the same date, Defendant Anova Food, LLC filed a Claim
Construction Brief.

(ECF No. 251).

On January 13, 2014, Plaintiffs William R. Kowalski and
Hawaii International Seafood, Inc. filed its Reply Claim
Construction Brief.

(ECF No. 258).

On January 27, 2014, Defendant Anova Food, LLC filed a
Responsive Claim Construction Brief.

(ECF No. 265).

On January 27, 2014, Plaintiffs William R. Kowalski and
Hawaii International Seafood, Inc. filed a Witness List for
the Claim Construction Hearing.

(ECF No. 266).

On January 28, 2014, Defendant Anova Food, Inc. obtained
new counsel.

(ECF No. 270).

On January 30, 2014, Plaintiffs William R. Kowalski and
Hawaii International Seafood, Inc. filed Exhibits for the
Claim Construction Hearing.

(ECF No. 275, 276).

At the claim construction hearing on February 3, 2014,
Defendant Anova Food, Inc. made an oral motion to continue the
claim construction hearing because it had retained new
counsel.

(ECF No. 277).

The Court granted the motion and

continued the hearing until February 25, 2014.

(Id.)

The Court set a new briefing schedule and ordered the

3

parties to agree to a list of no more than fourteen claim
terms to be construed.

(Id.)

On February 18, 2014, Plaintiffs filed a claim
construction brief.

(ECF No. 288).

On the same date, Defendant Anova Food, Inc. filed a
claim construction brief.

(ECF No. 287).

Defendant Anova Food, LLC also filed a claim construction
brief.

(ECF No. 286).

On February 25, 2014, the Court held a Markman hearing on
the construction of disputed terms in the patent.

(ECF No.

296).

LEGAL STANDARD
Claim construction is a question of law.

Markman v.

Westview Instr., Inc., 517 U.S. 370, 372 (1996).

Terms

contained in claims are “generally given their ordinary and
customary meaning.”

Phillips v. AWH Corp., 415 F.3d 1303,

1312 (Fed. Cir. 2005).

“[T]he ordinary and customary meaning

of a claim term is the meaning that the term would have to a
person of ordinary skill in the art in question at the time of
the invention.”

Id. at 1312.

Intrinsic evidence determines the meaning of disputed
claim terms when the meaning is not immediately apparent.

4

Id.

at 1314.

Intrinsic evidence includes the words of the claims

themselves, the patent specification, and, if in the record,
the prosecution history.

Id.; Vitronics Corp. v.

Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
“The appropriate stating point ... is always with the
language of the asserted claim itself.”

Comark

Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1186
(Fed. Cir. 1998).

Claim terms are considered in the context

in which they are used, including the language of other claims
of the patent.

Vitronics Corp., 90 F.3d at 1582.

Consideration of the specification is also essential and
forms “the primary basis for construing claims.”
415 F.3d at 1315.

Phillips,

The specification may reveal a special

definition given to a claim term by the patentee or an
intentional disclaimer or disavowal of claim scope by the
inventor.

Id. at 1316.

The patent’s prosecution history 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. at 1317.

Extrinsic evidence, such as dictionaries, technical
treatises, or expert testimony, may be considered if such

5

sources are helpful to determine the true meaning of claim
terms.

Phillips, 415 F.3d at 1318.

Extrinsic evidence may

aid claim construction but it cannot be used to contradict the
plain and ordinary meaning of a claim term as defined within
the intrinsic record.

Id. at 1322-23.
ANALYSIS

The Parties request the construction of a total of 19
claim terms in United States Patent No. 5,972,401 (“ ’401
Patent”).
Plaintiffs William R. Kowalski and Hawaii International
Seafood, Inc. (“Plaintiffs”) and Defendant Anova Food, LLC
(“Defendant Anova LLC”) want 19 claim terms construed and list
them in the same order in their claim construction briefs.
(ECF No. 286 at pp. 5-6; ECF No. 288 at pp. 10-11).
Defendant Anova Food, Inc. (“Defendant Anova Inc”) wants
only 17 claim terms construed but its list of the terms it
wants construed is provided in a different order.

(ECF No.

287 at pp. 7-11).
Defendant Anova Inc does not agree with all of the
proposed claim constructions of Defendant Anova LLC.

(ECF No.

286 at pp. 5-6; ECF No. 287 at pp. 7-11).
The Order adopts the sequence of terms in the lists
provided by Plaintiffs and Defendant Anova LLC.

6

Defendant

Anova LLC joined in some of Defendant Anova Inc’s arguments
and requested the same constructions for many claim terms.
When Defendant Anova Inc and Defendant Anova LLC disagree on a
claim term’s construction, both proposed claim constructions
are set out and analyzed.

I.

CONSTRUING TERMS 1-4
Terms 1-4 all concern the adjective “smoked” as used to

modify the terms “odor,” “taste,” “flavor,” and “flavoring” in
the ’401 Patent.

The Parties grouped the terms together and

addressed them collectively in their claim construction briefs
and at the Markman hearing.

TERM
TERM
TERM
TERM

1:
2:
3:
4:

smoke
smoke
smoke
smoke

odor
taste
flavor
flavoring

“Smoke odor” is found in Claims 1, 13, 27, 39, 68, 69,
74, and 75.
“Smoke taste” is found in Claims 1, 27, 49, 50, and 74.
“Smoke flavor” is found in Claims 13, 27, 39, 68, 69, and
75.
“Smoke flavoring” is found in Claims 69 and 75.

Plaintiffs’ Construction

Anova Inc’s Construction

7

Anova LLC’s Construction

smoked or smoky
odor

any odor present in
and/or imparted by
the smoke

smoked or smoky
taste

any taste present
in and/or imparted
by the smoke

smoked or smoky
flavor

Joins in the
requested claim
construction of
Anova Inc

any flavor present
in and/or imparted
by the smoke

smoked or smoky
flavoring

any flavoring
present in and/or
imparted by the
smoke

Plaintiffs’ proposed constructions of “smoke odor,”
“smoke taste,” “smoke flavor” and “smoke flavoring” as used in
the ’401 Patent are adopted.
“Smoke odor” is construed as “smoked or smoky odor.”
“Smoke taste” is construed as “smoked or smoky taste.”
“Smoke flavor” is construed as “smoked or smoky flavor.”
“Smoke flavoring” is construed as “smoked or smoky
flavoring.”
1.

Intrinsic Evidence
a.

Claim Terms

Claim terms must be construed in light of the appropriate
context in which they are used.

Aventis Pharmaceuticals Inc.

v. Amino Chemicals Ltd., 715 F.3d 1363, 1373 (Fed. Cir. 2013).

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A patent claim term should be construed consistently with its
appearance in other places in the same claim or in other
claims of the same patent.

Rexnord Corp. v. Laitram Corp.,

274 F.3d 1336, 1342 (Fed. Cir. 2001).

Different terms in

separate patent claims may be construed to cover the same
subject matter where the written description and prosecution
history indicate that such a reading of the terms is proper.
Nystrom v. TREX Co., Inc., 424 F.3d 1136, 1143 (Fed. Cir.
2005).

Two patent claims with different terminology can

define the exact same subject matter.

Curtiss-Wright Flow

Control Corp. v. Velan, Inc., 438 F.3d 1374, 1380 (Fed. Cir.
2006).
Plaintiff’s proposed construction for the adjective
“smoke” as “smoked or smoky” is consistent with the plain
language of the claims.

The construction is also consistent

with the context in which the adjective “smoke” is used,
including the language of other claims of the patent.

Claims

46, 49, 50, 64, 74 and 75 in the ’401 Patent refer to a
process that results in a product without a “smoked” or
“smoky” taste or flavor.

(Ex. 1, ’401 Patent at column 26,

line 3 (“26:3”), 26:21, 26:28, 27:49; Reexamination
Certificate at 2:9-10, 2:19-20, ECF No. 288).
Defendants Anova Inc and Anova LLC are attempting to

9

expand the definition to include a wide variety of
possibilities.

Defendants’ proposed constructions are

contrary to the Claim Terms, the Specification, the
Prosecution History, and the Extrinsic Evidence.
Defendants propose that the Court construe the adjective
“smoke” to mean any odor, taste, flavor, or flavoring present
in and/or imparted by the smoke.
Defendant Anova Inc asserts that “smoke” must be presumed
to have a different meaning than “smoked or smoky,” citing
Helmsderfer v. Bobrick Washroom Equipment, Inc., 527 F.3d
1379, 1382 (Fed. Cir. 2008) (explaining that different claim
terms are presumed to have different meanings).

In

Helmsdefer, the Federal Circuit Court of Appeals found that
“generally” and “partially” were presumed to have different
meanings based on the doctrine of claim differentiation.
The Federal Circuit Court of Appeals has cautioned that
“claim differentiation is a guide, not a rigid rule.”
Curtiss-Wright Flow Control Corp., 438 F.3d at 1381.

The

appellate court has explained that claim drafters often use
different terms to define the exact same subject matter.

Id.

Claim differentiation “can not broaden claims beyond their
correct scope.”

Kraft Foods, Inc. v. International Trading

Co., 203 F.3d 1362, 1368 (Fed Cir. 2000).
10

The ’401 Patent Claims themselves demonstrate that
Kowalski uses the terms “smoke,” “smoked” and “smoky” to
define the exact same subject matter.

Pickholtz v. Rainbow

Technologies, Inc., 284 F.3d 1365, 1373 (Fed. Cir. 2002)
(finding that the patent uses the terms “computer” and
“computer system” as synonyms).
Claims 49 and 50 use the modifier “smoke” and “smoky”
interchangeably as the claims describe a process that removes
“smoke taste compounds” in order to create a product that does
not have a “smoky taste.”
26:25-28, ECF No. 288).

(Ex. 1, ’401 Patent at 26:18-21,

Claims 74 and 75 use the modifier

“smoke” and “smoked” interchangeably.

(Ex. 1, Reexamination

Certificate at 1:27, 2:9-10, 2:14-15, 2:19, 2:23-24, ECF No.
288).

The ’401 Patent uses the word “smoke” as an adjective

the same way it uses the modifiers “smoked” and “smoky.”
“Smoked” and “smoky” are merely variations of the word
“smoke.”
It would be error to follow the Defendants’ attempt to
broaden the term “smoke” to mean all odors, tastes, flavors,
and flavorings.

Kraft Foods, Inc., 203 F.3d at 1368.
b.

The Specification

Statements that describe the invention as a whole, rather
than statements that describe only preferred embodiments, are

11

more likely to support a limiting definition of a claim term.
C.R. Bard, Inc. v. United States Surgical Corp., 388 F.3d 858,
864 (Fed. Cir. 2004).
The Specification supports Plaintiffs’ construction of
the adjective “smoke.”

The ’401 Patent Specification

describes the invention as a whole as a process that imparts
no “smoky” or “smoked” taste or flavor.
12:6, ECF No. 288).

(Ex. 1 at 3:23, 4:27,

The Specification explains that the

intention of the patent is to produce seafood that “appears
and tastes similar to fresh after it is frozen and thawed.”
(Id. at 1:30).
c.

The Prosecution History

The prosecution history of a patent provides guidance for
when a patent term should be read to deviate from its ordinary
meaning because of the way the patent was distinguished from
the prior art in the field.

Vitronics, 90 F.3d at 1582.

A

patentee may limit the meaning of a claim term by making a
clear and unmistakable disavowal of scope during prosecution.
Purdue Pharma L.P. v. Endo Pharms, Inc., 438 F.3d 1123, 1136
(Fed. Cir. 2006).

An alleged disavowal of claim scope will

not limit the scope of a claim if the disavowal is ambiguous.
Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1324 (Fed.
Cir. 2003).

12

Defendant Anova Inc provided a copy of the Prosecution
History of the ’401 Patent at Exhibit B.

(Defendant Anova

Food, Inc.’s Revised Claim Construction Brief filed February
18, 2014, ECF No. 287);

Vitronics Corp., 90 F.3d at 1582

(explaining that the court may consider the prosecution
history of the patent, if it is in the record).

An

examination of the Prosecution History provides further
support for Plaintiffs’ proposed construction of the adjective
“smoke” as “smoked or smoky.”
(i) Notice of Allowability
In the June 17, 1999, Notice of Allowability, the Patent
Examiner stated the reasons for allowing the patent as
follows: “the claimed process for treated food defines over
the prior art of record by comprising the steps of generating
smoke, removing smoke odor and/or taste compounds from said
smoke, and treating a food with said smoke such that the food
does not retain a smoky odor or taste.”

(Ex. B at p. 221, ECF

No. 287).
The Notice of Allowability makes clear that a person of
ordinary skill in the art would have understood the scope of
the ’401 Patent to cover a process that imparts no “smoky”
odor or taste, rather than a process that imparts no taste at
all.

Phillips, 415 F.3d at 1313.

13

(ii) Maga Document
Defendant Anova Inc bases its argument on a 1988 nonpatent, prior art document entitled, “Smoke in Food
Processing” authored by Joseph A. Maga (“Maga Document”).
(ECF No. 287 at p. 35; Ex. D).

Plaintiff Kowalski provided

the Maga document to the Patent & Trademark Office (“PTO”) and
cited it as prior art in the ’401 Patent.

(Ex. B at pp, 125,

128, 138, 173, 177-217, ECF No. 287; Ex. 1, ECF No. 288).
Plaintiff Kowalski cited the Maga document to show that a
person of ordinary skill in the art would know the thresholds
for imparting smoke odor and taste.
287).

(Ex. B at p. 173, ECF No.

Defendant Anova Inc argues that the Maga Document

explains that the characteristic smoke smell is not limited to
“smoked” or “smoky.”
Defendant Anova Inc’s arguments based on the Maga
Document are unpersuasive.

Defendants seek to broaden the

adjective “smoke” to “encompass relatively obscure definitions
that are not supported by the written description or
prosecution history.”

Nystrom, 424 F.3d at 1145-46.

The

intrinsic evidence in the record supports Plaintiffs’ proposed
construction of the adjective “smoke” as “smoked or smoky.”

2.

Extrinsic Evidence

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Judicial decisions in related proceedings may be
appropriate extrinsic evidence.

V-Formation, Inc. v. Benetton

Group Spa, 401 F.3d 1307, 1312 (Fed. Cir. 2005).

Plaintiffs

rely on a previous construction of the adjective “smoke” in
the ’401 Patent as support for its proposed construction.

In

Kowalski v. Mommy Gina Tuna Resources, et al., Civ. Nos. 0500679BMK, 06-00182BMK, 05-00787BMK, the Judge construed the
adjective “smoke” to mean “traditional smoky or smoked.”

(Ex.

2 at p. 17, ECF No. 288).
Just as the Defendants here, the defendants in Kowalski
v. Mommy Gina Tuna Resources argued that the Kowalski Patent’s
use of the term “smoke” should be construed as imparting any
odor, taste, flavor, or flavoring.

The Judge rejected the

construction proposed by the defendants.

The Judge examined

the Patent Claims, the Specification, the Patent Prosecution
History.

The Judge found the weight of the intrinsic evidence

favored the plaintiff’s proposed construction over any of the
extrinsic evidence.

The Judge explained that the Kowalski

Patent is “properly construed to claim a process that imparts
no smoked or smoky taste to the treated seafood.”

(Id. at p.

17).
Defendant Anova LLC argues that the previous claim
constructions of the ’401 Patent are not relevant.

15

Defendant

Anova LLC bases its arguments on the fact that Claims 1 and 67
in the Kowalski Patent were cancelled.
The Federal Circuit Court of Appeals has explained that
no deference should be given to claim construction rulings of
the Patent and Trademark Office.

In re Swanson, 540 F.3d

1368, 1377-78 (Fed. Cir. 2008).

The standard of proof in a

Patent and Trademark Office reexamination is preponderance of
the evidence, there is no presumption of validity, and the
examiner is conducting a subjective examination of the claim
in light of prior art.

Id.

Claims dependent on Claim 1 are still presumed valid in
this case and require construction.

35 U.S.C. § 282(a) (“Each

claim of a patent (whether in independent, dependent, or
multiple dependent form) shall be presumed valid independently
of the validity of other claims; dependent or multiple
dependent claims shall be presumed valid even though dependent
upon an invalid claim”).

The prior construction of Claim 1 is

relevant and persuasive extrinsic evidence.

V-Formation,

Inc., 401 F.3d at 1312; Bloom Eng’g Co. v. N. Am. Mfg. Co.,
129 F.3d 1247, 1250 (Fed. Cir. 1997) (dependent claims that
are not identical in form to invalid independent claims may be
asserted against defendants).
Court’s Construction of Terms 1-4

16

The Court’s construction of the terms “smoke odor,”
“smoke taste,” “smoke flavor” and “smoke flavoring” is
entirely consistent with the intrinsic evidence in the record
as well as the previous construction of the ’401 Patent claims
in the

Kowalski v. Mommy Gina Tuna Resources, et al. case.

The Court adopts Plaintiffs’ proposed construction.

The

adjective “smoke” in Claims 1, 13, 27, 39, 49, 50, 68, 69, 74,
and 75 is construed as “smoked or smoky.”

II.

CONSTRUING TERM 5:

smoke

“Smoke” as a noun is found in Claims 1, 11, 13, 49, 50,
60, 63, 68, 69, 74, and 75.

Plaintiffs’ Construction

Anova Inc’s Construction

Anova LLC’s Construction

the emissions from
heating an organic
smoking material,
said emissions
containing smoked
or smoky taste and
odor compounds

the emissions from
a material
undergoing
combustion or
pyrolysis (i.e. the
subjection of
organic compounds
to very high
temperatures)

Joins in the
requested claim
construction of
Anova Inc

The Court construes the noun “smoke” as “the emissions

17

from heating an organic material.”

1.

Intrinsic Evidence
a.

Claim Terms

There is a presumption that an independent claim should
not be construed as requiring a limitation added by a
dependent claim.
at 1380.

Curtiss-Wright Flow Control Corp., 438 F.3d

“The statute stresses that a dependent claim must

add a limitation to those recited in the independent claim.”
Id. (citing 35 U.S.C. § 112, ¶4).
Independent claims 1, 49, 50, 68, 69, 74, and 75 of the
‘401 Patent use the phrase “heating organic material to
generate smoke.”

(Ex. 1, ’401 Patent at Claims 1, 49, 50, 68,

69, Reexamination Certification at Claims 74, 75, ECF No.
288).
Dependent Claims 70 and 71 limit the “heating step” as
described in the independent claims to a process where the
organic material either “combusts” or “pyrolyses.”

(Id. at

Claims 70 and 71).
The Parties agree that the noun “smoke” in the patent
refers to “emissions.”

Plaintiffs and Defendant Anova Inc

disagree on the scope of the term.

Defendants seek to limit

the term “smoke” to the processes of “combustion” or

18

“pyrolysis” as used in the Dependent Claims 70 and 71.
Construing the noun “smoke” in the ’401 Patent to be
limited to “combustion” or “pyrolysis” as used in the
Dependent Claims would be error.
Corp., 438 F.3d at 1380.

Curtiss-Wright Flow Control

Reading the limitation from

Dependent Claims 70 and 71 into the Independent Claims would
make Claims 70 and 71 superfluous.

Id.

Plaintiffs’ construction seeks to add “smoking” and
“smoky” and “smoked” to the construction of the noun “smoke.”
The Claim Terms themselves consistently refer to “heating
organic material.”

The Claims do not refer to “organic

smoking material” as proposed by Plaintiffs.

The Court

declines to construe “smoke” based on a lone reference to
“organic smoking material” in the Patent’s Abstract.
at ’401 Patent, Abstract, ECF No. 288).

(Ex. 1

It is inconsistent

with the Claims Terms themselves to add this modifier to the
construction of “smoke.”
Plaintiffs also request the Court define “smoke” as
“containing smoked or smoky taste and odor compounds.”
Plaintiffs’ construction fails to consider the context in
which the term is used.

Phillips, 415 F.3d at 1314.

Plaintiffs’ proposed construction would lead to confusing and
repetitive claim language in the patent.

19

Bd. Of Regents of

the Univ. Of Tex. Sys. v. BENQ Am. Corp., 533 F.3d 1362, 1370
(Fed. Cir. 2009) (declining to adopt a construction that would
lead to a nonsensical result).
b.

The Specification

Interpreting a claim limitation based solely on a single
example from the specification has been repeatedly rejected by
the Federal Circuit Court of Appeals.

Marine Polymer

Technologies, Inc. v. HemCon, Inc., 672 F.3d 1350, 1370 (Fed.
Cir. 2012); Silicon Graphics, Inc. v. ATI Technologies, Inc.,
607 F.3d 784, 792 (Fed. Cir. 2010).

The appellate court has

“cautioned against limiting the claimed invention to preferred
embodiments or specific examples in the specification.”

Tex.

Intruments, Inc. v. U.S. Int’l Trade Comm’n, 805 F.2d 1558,
1563 (Fed. Cir. 1986).

Varied use of a disputed term in the

written description demonstrates the breadth of the term
rather than providing a limited definition.

Johnson Worldwide

Assocs. v. Zebco Corp., 175 F.3d 985, 991 (Fed. Cir. 1999).
The preferred embodiment describes “smoke” as being the
product of either “combustion” or “pyrolysis.”

(See Ex. 1,

’401 Patent at 11:58-64, “Combusting a five cylinder retort
packed with wood sawdust is the preferred embodiment described
herein.

The pyrolysis of the wood sawdust into smoke creates

byproducts of tar, moisture, and particulate residue at the

20

outlet of the smoke generating subsystems”).
It would be error to limit “smoke” to the specific
examples provided in the preferred embodiment and written
description in the ’401 Patent.

Silicon Graphics, Inc., 607

F.3d at 792.
c.

The Prosecution History

The Prosecution History demonstrates that Kowalski sought
to use the broad term “heating” rather than a more limited
term such as “combusting.”

Kowalski intentionally changed the

terms “combusting” and “burning” in various claims and
replaced them with “heating.”
165-66, 168-69).
changes.

(Ex. B at pp. 71-72, 74, 76,

The Patent and Trademark Office approved the

The Prosecution History supports the Court’s

construction of “smoke.”

2.

Extrinsic Evidence

The Court’s construction of the noun “smoke” is entirely
consistent with the intrinsic evidence in the record.
Extrinsic evidence is not required to construe the term.
Vitronics Corp., 90 F.3d at 1584.

Court’s Construction of Term 5: “smoke”
The dependent claim terms and the preferred embodiment
21

do not limit the noun “smoke” in the ’401 Patent.

The term

“smoke” in Claims 1, 11, 13, 49, 50, 60, 63, 68, 69, 74, and
75 is construed as “the emissions from heating an organic
material.”

III.

CONSTRUING TERM 6:
TERM 7:

heating

burning

“Heating” is found in Claims 1, 11, 49, 50, 63, 68, 69,
74, and 75.

“Burning” is found in Claim 60.

Plaintiffs’ Construction

Anova Inc’s Construction

Anova LLC’s Construction

No need for
construction

No need for
construction

burning (organic
material) at a
temperature between
400 and 950 degrees
Fahrenheit

The plain and ordinary meaning of the terms “heating” and
“burning” is sufficient.

1.

Intrinsic Evidence
a.

Claim Terms

There is a presumption that an independent claim should
not be construed as requiring a limitation added by a
dependent claim.

Curtiss-Wright Flow Control Corp., 438 F.3d

at 1380.
22

Claims 1, 49, 50, 63, 68, 69, 74 and 75 are Independent
Claims that contain “heating.”

Claim 60 is an Independent

Claim that contains “burning.”
Claim 33 is a Dependant Claim that limits heating to be
“between approximately 400 degrees Fahrenheit (204 degrees
Centigrade) and approximately 950 degrees Fahrenheit (510
degrees Centigrade).”
Defendant Anova LLC is the only party requesting
construction of the terms “heating” and “burning.”

Defendant

Anova LLC proposes the same construction for each term,
asserting the terms are “ambiguous.”

Defendant Anova LLC

requests “heating” be construed at “a temperature between 400
and 950 degrees Fahrenheit.”
It would be erroneous to limit “heating” in the
Independent Claims to the range indicated in one Dependent
Claim.

Curtiss-Wright Flow Control Corp., 438 F.3d at 1380.

The Court rejects Defendant Anova LLC’s proposed construction
to limit “heating” or “burning” to a numerical range.

Falana

v. Kent State University, 669 F.3d 1349, 1355 (Fed. Cir. 2012)
(declining to limit the claims to a specific temperature based
on the plain language of the claims).

b.

The Specification

23

Claims are not limited by the embodiments disclosed in
the specification.

Amgen Inc. v. Hoechst Marion Roussel,

Inc., 314 F.3d 1313, 1328 (Fed. Cir. 2003).

The Federal

Circuit Court of Appeals has stated that it “will not at any
time import limitations from the specification into the
claims.”

CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d

1225, 1231 (Fed. Cir. 2005).
Defendant Anova LLC points to the Specification that
suggests the process utilize “temperatures in an operable
range of 400 and 950 degrees Fahrenheit.”

(Ex. 1 at ’401

Patent, 11:48-49).
“[W]hen a claim term is expressed in general descriptive
words, [courts] will not ordinarily limit the term to a
numerical range that may appear in the written description or
in other claims.”

Renishaw PLC v. Marposs Societa’ per

Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); Conoco, Inc. v.
Energy & Envtl. Int’l, L.C., 460 F.3d 1349, 1358 (Fed. Cir.
2006).
The intrinsic evidence in the record demonstrates that a
person of ordinary skill in the art can understand the terms
“heating” and “burning” in the context of the ’401 patent.
Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1384
(Fed. Cir. 2005) (“a patentee need not define his invention
24

with mathematical precision in order to comply with the
definiteness requirement”).

2.

Extrinsic Evidence

In Kowalski v. Mommy Gina Tuna Resources, et al., Civ.
Nos. 05-00679BMK, 06-00182BMK, 05-00787BMK, the Judge
considered nearly identical arguments regarding the term
“heating” in the ’401 Patent.
ECF No. 288).

(Plaintiff’s Ex. 3 at pp. 6-7,

The Judge determined that “heating” was not

limited to any specific numerical range.

Id.

Court’s Construction of Terms 6 and 7
The Court need not construe a claim term if it is nontechnical, is in plain English, and derives no special meaning
from the patent and its prosecution history.

02 Micro Int’l

Ltd. v. Beyond Innovation Tech. Co., Ltd., 521 F.3d 1351, 1360
(Fed. Cir. 2008).

The “ordinary” meaning of such terms is

sufficient and the Court should avoid merely paraphrasing
claim language with less accurate terminology.

Id.; Perfect

Web Techs. v. InfoUSA, Inc., 587 F.3d 1324, 1332 (Fed. Cir.
2009).
The Court declines to limit the terms “heating” and
“burning” in the ’401 Patent to a specific numerical range.

25

The plain and ordinary meaning of the terms is sufficient.

IV.

CONSTRUING TERM 8:

organic material

“Organic material” is found in Claims 1, 49, 50, 60, 68,
69, 74, and 75.

Plaintiffs’ Construction

Anova Inc’s Construction

Anova LLC’s Construction

organic smoking
material (including
wood, and the
sawdust, wood
chips, and charcoal
that can be made
from wood)

carbon-containing
materials, such as
wood, wood sawdust,
hardwood charcoal,
leaves, bagasse
from sugar cane,
pineapple husks,
and rice hulls

Joins in the
requested claim
construction of
Anova Inc

The Court construes the term “organic material” as
“carbon-containing material.”

1.

Intrinsic Evidence
a.

Claim Terms

During oral argument, Plaintiffs agreed with Defendant
Anova Inc’s construction of “organic” as “carbon-containing.”
The Parties disagree about the use of the modifier “smoking”
along with the examples listed after “material.”
Plaintiffs’ construction seeks to define “organic
26

material” as “organic or carbon-containing smoking material.”
The Claim Terms themselves do not refer to “organic smoking
material.”

(Ex. 1, ’401 Patent at Claims 1, 49, 50, 68, 69,

Reexamination Certification at Claims 74, 75, ECF No. 288).
The Claims refer only to “organic material.”

The Court

declines to add “smoking” to the construction of “organic
material” based on a lone reference to “organic smoking
material” in the 401 Patent’s Abstract.

b.

The Specification

Claims are not limited by the embodiments disclosed in
the specification.

Amgen Inc., 314 F.3d at 1328.

Courts

should not limit a claim based solely on a single example from
the specification.

Silicon Graphics, Inc., 607 F.3d at 792.

The Specification lists a number of examples of organic
material including wood, hardwood charcoal, wood sawdust,
leaves, bagasse from sugar cane, pineapple husks, and rice
hulls.

(Ex. 1, ’401 Patent at 6:43, 7:47-48, 15:65-66, 16:33,

16:48, 16:60, ECF No. 288).

Plaintiffs and Defendant Anova

Inc each request different constructions of “organic material”
to include some of the examples used in the Specification as
part of the definition.
It is “not enough that the only embodiments, or all of

27

the embodiments, contain a particular limitation to limit a
claim term beyond its ordinary meaning.”

Aventis Pharma S.A.

v. Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012).

Even

if a Specification has only one embodiment, its claim will not
be confined to that example “unless the patentee has
demonstrated a clear intention to limit the claim scope using
words or expressions of manifest exclusion or restriction.”
Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed.
Cir. 2004).
The Specification provides a variety of examples of
organic material and identifies wood sawdust as the preferred
embodiment.

Kowalski did not clearly limit the claim scope of

organic material to the specific examples suggested by
Plaintiffs and Defendant Anova Inc.

An ordinarily skilled

artisan would understand the meaning of “carbon-containing
material” as used in the 401 Patent.

Ancora Technologies,

Inc. v. Apple, Inc., __ F.3d __, 2014 WL 803104, *6-7 (Fed.
Cir. Mar. 3, 2014).

2.

Extrinsic Evidence

In Kowalski v. Mommy Gina Tuna Resources, et al., Civ.
Nos. 05-00679BMK, 06-00182BMK, 05-00787BMK, the Judge
construed the term “organic material” in the ’401 Patent.

28

(Ex. 3 at pp. 21-22, ECF No. 288).

The Judge construed the

term to mean “carbon containing materials, including wood,
wood sawdust, and charcoal.”

Id.

The Court here finds it

unnecessary to include particular carbon-containing materials,
as it could be construed as a limitation.

Court’s Construction of Term 8: organic material
The Court’s construction of “organic material” is
consistent with the intrinsic evidence and the extrinsic
evidence in the record.

The term “organic material” in Claims

1, 49, 50, 60, 68, 69, 74, and 75 is construed as “carboncontaining material.”

V.

CONSTRUING TERM 9:

aging

“Aging” is found in Claims 23, 36, 60, and 63.

Plaintiffs’ Construction

Anova Inc’s Construction

Anova LLC’s Construction

storing

filtering by
allowing components
to settle

settling flavor
imparting phenols
by storing for an
extended period of
time

The Court construes the term “aging” as “allowing the
phenols, and any other remaining carcinogens, in the smoke to

29

settle.”

1.

Intrinsic Evidence

Claim terms are generally given their ordinary and
customary meaning as understood by a person of ordinary skill
in the art.

Phillips, 415 F.3d at 1314.

An exception applies

to the general rule when a patentee sets out a definition for
a claim term and acts as his own lexicographer.

Thorner v.

Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir.
2012).
To act as its own lexicographer, a patentee must “clearly
set forth a definition of the disputed claim term” other than
its plain and ordinary meaning.

Id.

The Specification need

not reveal a term’s definition explicitly, but may do so “by
implication.”

Astrazeneca LP v. Apotex, Inc., 633 F.3d 1042,

1051 (Fed. Cir. 2010).
Plaintiff Kowalski acted as his own lexicographer when he
defined the aging process in the Summary of the Invention
section of the ’401 Patent.

Thorner, 669 F.3d at 1365.

The

’401 Patent explains that “allowing the phenols, and any other
remaining carcinogens, in the smoke to settle, or ‘age,’ in
the inner accordion bladder or in storage canisters for future
use, is the final backup filtering step in the process.

30

It is

analogous to sediment settling in wine making.”
Patent at 14:19-23, ECF No. 288).

(Ex. 1, ’401

Plaintiff Kowalski clearly

expressed an intent to define “aging” as a specific process
distinct from the ordinary meaning of the term.
Each of the Parties’ attempts to construe the term
“aging” go beyond the definition provided by Kowalski in the
patent.

Plaintiffs’ proposed construction alters the language

used by Kowalski in defining the process.

Both Defendants

recognize that Kowalski defined “aging” in the patent.
Defendant Anova Inc’s proposed construction does not track the
language used by Plaintiff Kowalski.

Defendant Anova LLC

seeks to add limitations from the preferred embodiment.
The definition of the term “aging” does not need to
include the parameters for use of the smoke as contemplated in
the Specification.

CollegeNet, Inc., 418 F.3d at 1231.

The

term is construed based on Plaintiff Kowalski acting as his
own lexicographer.

AIA Engineering Ltd. v. Magotteaux Intern.

S/A, 657 F.3d 1264, 1276-77 (Fed. Cir. 2011) (finding that the
specification revealed that the patentee acted as his own
lexicographer).

2.

Extrinsic Evidence

The Parties have not pointed to any persuasive extrinsic

31

evidence for the term “aging.”

Court’s Construction of Term 9: aging
The Court’s construction of “aging” is based on Plaintiff
Kowalski acting as his own lexicographer.

The term “aging” in

Claims 23, 36, 60, and 63 is construed as “allowing the
phenols, and any other remaining carcinogens, in the smoke to
settle.”

VI.

CONSTRUING TERM 10:

filtering

“Filtering” is found in Claims 11, 69, and 75.

Plaintiffs’ Construction

Anova Inc’s Construction

Anova LLC’s Construction

separating out or
reducing, including
but not limited to
by cooling,
condensing,
settling out,
and/or aging,
and/or by bringing
the smoke into
contact with other
compounds or
substances

Reducing

Joins in the
requested claim
construction of
Anova Inc

The Court construes the term “filtering” as “a broadlydefined process including not only passing a gas or liquid
through a porous material, but also the cooling and settling
32

of the smoke.”

1.

Intrinsic Evidence

The “ordinary” meaning of a term should speak for itself,
and the court should avoid paraphrasing claim language with
less accurate terminology.

U.S. Surgical Corp. v. Ethicon,

Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997).
Defendant Anova Inc’s proposed constructions merely
paraphrases the term “filtering.”

Paraphrasing the term fails

to consider the broad description of the term in the
Specification.

The Specification explains “filtering” in

broad terms as a process that includes “cooling” and
“settling.”

(Ex. 1, at 8:24-26, 14:19-23, 18:33-34, 19:43,

ECF No. 288).

Plaintiffs’ proposed construction considers the

broad use of the term but imports too many descriptions into
its proposed definition.

2.

Extrinsic Evidence

Extrinsic evidence may aid claim construction but it
cannot be used to contradict the plain and ordinary meaning of
a claim term as defined within the intrinsic record.
Phillips, 415 F.3d at 1322-23.
Plaintiffs point to a prior construction order in the

33

Kowalski v. Mommy Gina Tuna Resources, et al., case as support
for its proposed definition.

(Plaintiffs’ Claim Construction

Brief, ECF No. 288 at p. 37-38).

In Mommy Gina Tuna

Resources, the Judge found that the Specification as a whole
referred to filtering as a process that included both the
cooling and settling processes.
288).

(Ex. 3 at pp. 22-24, ECF No.

The Judge construed “filtering” as “a broadly-defined

process including not only passing a gas or liquid through a
porous material, but also the cooling and settling of the
smoke.”

(Id. at p. 24).

The prior construction of “filtering” is relevant and
persuasive extrinsic evidence.

V-Formation, Inc., 401 F.3d at

1312.
Court’s Construction of Terms 10: “filtering”
The Court’s construction of the term “filtering” is
entirely consistent with the intrinsic evidence in the record.
The Court adopts the previous construction of the term
“filtering” as found in the
Resources, et al. case.

Kowalski v. Mommy Gina Tuna

“Filtering” in Claims 11, 69, and 75

is construed as “a broadly-defined process including not only
passing a gas or liquid through a porous material, but also
the cooling and settling of the smoke.”

34

VII.

CONSTRUING TERMS 11-18

Terms 11-18 all concern the process for removing,
reducing, filtering, or eliminating the taste, odor, or flavor
components from the smoke in the ’401 Patent.

The Parties

grouped the terms together and addressed them collectively as
each phrase describes a similar process.
for the related terms are the same.

The legal arguments

The proposed

constructions are very similar.
The terms are divided into four sections:
(1) The Reducing Terms;
(2) The Removing Terms;
(3) The Filtering Term; and
(4) The Eliminating Terms.
Just as in the construction of the adjective “smoke,”
Defendants are attempting to expand the definition of all of
the claim terms 11 through 18.

(1)

The Reducing Terms
TERM 11:

“Reduce taste imparting components below
thresholds for imparting smoke odor and
taste” is found in Claims 1 and 74

TERM 12:

“Reduce taste and odor imparting
particulates
and vapors below taste and odor recognition
thresholds” is found in Claim 60.
35

TERM 13:

“Reduce particulate and vapor phenols below
taste and odor recognition thresholds” is
found in Claim 63

Plaintiffs’ Construction

Anova Inc’s Construction

Anova LLC’s Construction

reduce the taste causing
parts of that smoke at
least enough so the
aforesaid smoke would
not cause meat to end up
with a smoked or smoky
odor or taste if the
meat is treated with
that smoke

reduce all taste
imparting components in
the smoke to
concentrations below
those that will impart
to the smoke any
perceptible odor or
taste

reduce all taste
imparting components
below thresholds for
imparting smoke odor and
taste

reduce the taste and
odor giving particles
and vapors at least
enough so that the
aforesaid smoke would
not cause the seafood to
end up with a smoked or
smoky odor or taste if
the seafood is treated
with that smoke

reduce all taste and
odor imparting
particulates and vapors
in the smoke to
concentrations below
those that will impart
to the smoke any
perceptible taste or
odor

reduce all taste
imparting components
below thresholds for
imparting smoke odor and
taste

reduce the particle
phenols and vapor
phenols of that smoke at
least enough so the
aforesaid smoke would
not cause seafood to end
up with a smoked or
smoky taste and odor if
the seafood is treated
with that smoke

reduce all phenols in
the particulate and
vapor phrases of the
smoke to concentrations
below those that will
impart to the smoke any
perceptible taste or
odor

reduce all taste
imparting components
below thresholds for
imparting smoke odor and
taste

(2)

The Removing Terms

TERM 14:

“Removing components that impart smoke odor
from said smoke...whereby the quantity of
smoke odor imparting components removed
36

from said smoke is adequate to prevent
imparting a smoke odor to said food” is
found in Claim 68.
TERM 15:

“Removing a portion of said smoke odor and
flavor imparting components...so as to
prevent smoke flavoring of said food” is
found in Claim 69.

Plaintiffs’ Construction

Anova Inc’s Construction

Anova LLC’s Construction

removing from that smoke
parts of that smoke that
cause smoked or smoky
odor, at least enough to
prevent causing food
treated with that smoke
to end up with a smoked
or smoky odor when the
food is treated with
that smoke

removing all odor
imparting components in
the smoke to
concentrations below
those that will impart
to the smoke any
perceptible odor

removing all taste
imparting components
below thresholds for
imparting smoke odor and
taste

remove at least enough
of those smoked or smoky
odor and flavor causing
components so that when
the food is exposed to
that filtered smoke that
food does not end up
with smoked or smoky
flavoring

remove all odor and
flavor imparting
components in the smoke
to concentrations below
those that will impart
to the smoke any
perceptible odor or
flavor

remove all taste
imparting components
below thresholds for
imparting smoke odor and
taste

(3)

The Filtering Term
TERM 16:

“Filtering components that impart smoke
flavor from said smoke to below limits for
imparting smoke flavoring to food...without
imparting a smoke flavor to said food...to
concentrations below odor and taste
recognition thresholds for imparting a
smoke flavor to the meat” is found in Claim
75.

Plaintiffs’ Construction

Anova Inc’s Construction

37

Anova LLC’s Construction

filtering parts that
give smoked or smoky
flavor from that smoke
at least enough so that
smoke would not cause
meat to end up with a
smoked or smoky
flavoring, and exposing
that filtered smoke to
food without giving a
smoked or smoky flavor
to that food so that the
resulting or remaining
smoke would not cause
the treated meat to end
up with a smoked or
smoky flavor when the
meat is treated with
that smoke

(4)

reducing all flavor
imparting components in
the smoke to
concentrations below
those that will impart
to the smoke any
perceptible flavor

filtering all taste
imparting components
below thresholds for
imparting smoke odor and
taste

The Eliminating Terms
TERM 17:

“Eliminating said smoke taste compounds
from said smoke; and treating meat with
said smoke; whereby said treated meat does
not have a smoky taste” is found in Claim
49.

TERM 18:

“Eliminating smoke taste compounds from
said smoke; treating meat with said smoke;
and whereby said treated meat does not
retain a smoky taste” is found in Claim 50.

Plaintiffs’ Construction

Anova Inc’s Construction

38

Anova LLC’s Construction

getting rid of those
smoked or smoky taste
compounds from that
smoke at least enough so
that when you treat meat
with that smoke the meat
does not end up with a
smoky taste

removing all smoke taste
imparting compounds in
the smoke so that none
remain in the smoke, and
then treating meat with
the smoke from which all
smoke taste imparting
compounds have been
removed

eliminating all taste
imparting components
below thresholds for
imparting smoke odor and
taste

getting rid of smoked or
smoky taste compounds
from the aforesaid
smoke; treating meat
with the aforesaid
smoke; and whereby that
treated meat does not
keep or hold or end up
with a smoky taste

removing all smoke taste
imparting compounds in
the smoke so that none
remain in the smoke, and
then treating meat with
the smoke from which all
smoke taste imparting
compounds have been
removed

eliminating all taste
imparting components
below thresholds for
imparting smoke odor and
taste

The plain and ordinary meaning of Terms 11-18 is
sufficient.

1.

Intrinsic Evidence
a.

Claim Terms

Claims must be construed in light of the appropriate
context in which the claim term is used.
Pharmaceuticals Inc., 715 F.3d at 1373.

Aventis
The “ordinary”

meaning of a term should speak for itself, and the court
should avoid paraphrasing claim language with less accurate
terminology.

U.S. Surgical Corp., 103 F.3d at 1568.

When the

plain and ordinary meaning of a claim term is sufficient and

39

it needs no further construction, the limitations proposed by
the opposing party do not apply and that party will not be
permitted to represent to a jury that such a limitation
exists.

02 Micro Int’l Ltd., 521 F.3d at 1360; Symantec Corp.

v. Acronis, Inc., 2014 WL 230023, *4, (N.D. Cal. Jan. 21,
2014).
The Federal Circuit Court of Appeals has found that
Courts should not delineate terms of degree when the patent
provides no such standard.

Exxon Research and Eng’g Co. v.

United States, 265 F.3d 1371, 1381 (Fed. Cir. 2001); Playtex
Prods., Inc. v. Procter & Gamble Co., 400 F.3d 901, 907 (Fed.
Cir. 2005).
Defendants seek to construe Terms 11-18 without
considering the context of each of the claim terms.

Terms 11-

18 refer to the process in the Kowalski Patent that creates a
tasteless smoke.

Claims 1 and 74 refer to the process as

creating a “substantially” tasteless smoke.

(Ex. 1, ’401

Patent at Claim 1; Reexamination Certificate at Claim 74).
Defendants seek to construe the terms referring to the
“substantially tasteless” smoke to mean the smoke is
completely tasteless.

Defendants request a construction where

all smoke, odor, taste, or flavor is removed in the Kowalski
Patent’s process.

This construction is contrary to the claim
40

language.
Defendants have not cited to a case where a court
construed a “term of degree” such as “substantially” to mean
“zero” or “all.”

See Glaxo Group Ltd. v. Ranbaxy Pharms,

Inc., 262 F.3d 1333, 1337 (Fed. Cir. 2001) (finding the phrase
“essentially free of crystalline material” could be properly
construed as requiring a crystalline content of less than 10%
based on the applicant’s statements describing the prior
art”); Biotec Biologische Naturverpackungen GmbH & Co. KG v.
Biocorp, Inc., 249 F.3d 1341, 1347 (Fed. Cir. 2001)
(construing the term “substantially water free” as having a
water content below 5% in accordance with statements during
the prosecution history and distinguishing a prior art
reference having a water content from 5% to 30%).
The Federal Circuit Court of Appeals has found on
numerous occasions that the courts should not construe terms
such as “substantially” to a precise numeric constraint.
Cordis v. Medtronic AVE, Inc., 339 F.3d 1352, 1361 (Fed. Cir.
2003) (refusing to impose a precise numeric constraint on the
term “substantially uniform thickness”); Anchor Wall Sys. v.
Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1311 (Fed. Cir.
2003) (explaining that “substantially” is a descriptive term
commonly used in patent claims to avoid a strict numerical

41

boundary to the specified parameter); PPG Induc. V. Guardian
Indus. Corp., 156 F.3d 1351, 1355 (Fed. Cir. 1998) (“claims
are often drafted using terminology that is not as precise or
specific as it might be....That does not mean, however, that a
court, under the rubric of claim construction, may give a
claim whatever additional precision or specificity is
necessary to facilitate a comparison between the claim and the
accused product”).
Claims 60, 63, 68, 69, and 75 cover the same subject
matter as Claims 1 and 74.
438 F.3d at 1380.

Curtiss-Wright Flow Control Corp.,

The Claim Terms themselves demonstrate that

the process in the ’401 Patent does not reduce, remove,
filter, or eliminate all odor, taste, or flavor from the
smoke.
b.

The Specification

Statements that describe the invention as a whole are
more likely to support a limiting definition of a claim term.
C.R. Bard, Inc., 388 F.3d at 864.
The Specification describes the ’401 Patent, as a whole,
as intending to produce seafood that appears and tastes
“similar” to fresh after it is frozen and thawed.
’401 Patent at 1:30).

(Ex. 1,

The Specification does not claim that

all odor, taste, and flavor are removed in the process.
42

As

Plaintiffs argued during the Markman hearing, the process is
intended to create a food product that tastes similar to fresh
but not identical to fresh.
The ’401 Patent in the Specification, just as in the
Claim Terms, refers to smoke as being “substantially
tasteless.”
No. 288).

(Ex. 1, ’401 Patent at 13:13, 17:14, 19:62, ECF

The Specification explains that “recognition

thresholds vary with the olfactory and taste senses of each
individual.” Id. at 17:14-20. Plaintiff Kowalski would not
have included the word “substantially” or the disclaimer
regarding recognition thresholds if the patent covered a
process where all taste, flavor, and odor components were
removed.

The Specification does not support Defendants’

proposed constructions.
c.

Prosecution History

Kowalski referred to the ’401 Patent as reducing
“substantially” all taste imparting particulates and vapors
throughout the Prosecution History.
In the March 30, 1998 Petition to Make Special, Kowalski
distinguished the ’401 Patent from the Yamaoka Patent.
Kowalski explained that the Yamaoka Patent “does not
anticipate the present invention because it does not meet the
limitation of reducing substantially all taste imparting

43

particulates and vapors below recognition thresholds for odor
and taste.” (Ex. B at p. 114, ECF No. 287) (emphasis added).
Kowalski emphasized the purpose of the ’401 Patent was to
“remove substantially all taste imparting components.”
at p. 115) (emphasis added).

(Id.

In the July 28, 1998 Petition to

Make Special, Kowalski again distinguished his patent from
prior art because the Yamaoka Patent “does not meet the
limitation of reducing substantially all taste imparting
particulates and vapors.”

(Id. at p. 131) (emphasis added).

During the Markman hearing, Defendants pointed to a
single instance in the Prosecution History where Kowalski
omitted the word “substantially.”

(ECF No. 287 at p. 122).

The one instance of failing to include “substantially” in the
Prosecution History does not demonstrate that the ’401 Patent
creates a smoke without any taste, odor or flavor.

The

omission of one use of “substantially” cannot be a basis of
ignoring the otherwise continual use of “substantially” in the
Claims, the Specification, and the Prosecution History.

The

Intrinsic Evidence does not support Defendants’ claim
construction for the terms relating to the process of creating
super-purified smoke in the ’401 Patent.

2.

Extrinsic Evidence

44

Defendant’s proposed constructions conflict with the
previous constructions of terms in Claims 1, 68, and 69.

In

Kowalski v. Mommy Gina Tuna Resources, et al., Civ. Nos. 0500679BMK, 06-00182BMK, 05-00787BMK, the Judge construed
“reduce taste imparting components below thresholds for
imparting smoke odor and taste” from Claim 1 as “reduce the
taste imparting components (i.e., parts) of the generated
(i.e., produced) smoke at least enough so that the resulting
or remaining smoke would not give smoke odor and taste to
meat.”

(Ex. 21 at p. 2, ECF No. 288).

The Judge did not find

that the claim term covered a process where the smoke did not
give “any” odor or taste to meat as proposed by Defendants.
In the previous construction in Mommy Gina Tuna
Resources, the Judge construed one of the removing terms.
(Id.)

The Judge construed the term “removing components that

impart smoke odor from said smoke...whereby the quantity of
smoke odor imparting components removed from said smoke is
adequate to prevent imparting a smoke odor to said food” from
Claim 68.

The Judge construed the term as a process “whereby

the amount of [‘]smoke odor giving parts[’] that were removed
is sufficient to prevent giving a smoke odor to the food.”
(Ex. 21 at p. 4, ECF No. 288).

The previous construction of

the Kowalski Patent provides no support for Defendants’

45

position that Terms 11-18 should be construed to cover a
process where all odor, taste, and flavor was removed,
reduced, filtered, or eliminated from the smoke.

The Court’s Construction of Terms 11-18
Defendants’ proposed constructions of Terms 11-18 are
contrary to both the Intrinsic and the Extrinsic Evidence in
the record.
Plaintiffs’ proposed constructions are unnecessary and
confusing.
at 1370.

Bd. Of Regents of the Univ. Of Tex. Sys., 533 F.3d

Plaintiffs’ constructions do not consider the

context of the terms in the Claims themselves.
Pharmaceuticals Inc., 715 F.3d at 1373.

Aventis

It is inappropriate

to paraphrase Claim Terms with less precise descriptions.
U.S. Surgical Corp., 103 F.3d at 1568.
The Court declines to construe Terms 11-18 any further
than their plain and ordinary meaning.

Defendants’ arguments

relating to their proposed constructions are rejected and may
not be presented to the jury.

02 Micro Int’l Ltd., 521 F.3d

at 1360; Symantec Corp. v. Acronis, Inc., 2014 WL 230023, *4,
(N.D. Cal. Jan. 21, 2014).

A person of ordinary skill in the

art would understanding the terms as used in the patent.
Allvoice Computing PLC, v. Nuance Communications, Inc., 504
46

F.3d 1236, 1242 (Fed. Cir. 2007) (explaining that the record
shows that an artisan of ordinary skill would understand the
bounds of the claim when read in light of the patent).

VIII.

CONSTRUING TERM 19:

different time and place

“Different time and place” is found in Claim 44.

Plaintiffs’ Construction

Anova Inc’s Construction

Anova LLC’s Construction

not as one continuous,
uninterrupted flow
operation, e.g., where
the manufactured smoke
is put in a storage
container and used for
treatment later and/or
used in a different
location unconnected to
the smoke generation
equipment

No need for
construction

Joins in the
requested claim
construction of
Anova Inc

The plain and ordinary meaning of the term “different
time and place” is sufficient.

1.

Intrinsic Evidence
a.

Claim Terms

Claim terms must be construed in light of the appropriate

47

context in which they are used.
715 F.3d at 1373.
through 3.

Aventis Pharmaceuticals Inc.,

Claim 44 is a claim dependent on Claims 1

Claim 44 provides that the steps for creating

smoke are carried out at a “different time and place” than the
steps for treating the food with the smoke.

Claims 23, 36,

and 37 are also dependent on Claims 1 through 3.

Claims 23,

36, and 37 provide for specific time durations between
creating the smoke and treating the food.

Claims 60 and 63

also describe specific time durations between the creation of
the smoke and the treatment of the food.
It is clear based on the Claims themselves that the ’401
Patent covers a process where the creation of the smoke and
the treatment of the food may be performed at a “different
time and place.”
b.

The Specification

Even preferred embodiments that contain a particular
limitation are insufficient to limit a claim term beyond its
ordinary meaning.

Aventis Pharma S.A., 675 F.3d at 1330.

The Abstract in the ’401 Patent states that the smoke may
be used to treat food “at the same time or at another place
and time.”

(Ex. 1, ‘401 Patent at Abstract, ECF No. 288).

The Specification explains that the ’401 Patent covers a
process where the creation of smoke is performed at “another

48

time or place” than the treatment of the food with the smoke.
(Id. at 1:43, 15:12, 21:15, The Specification states:
If treatment at another time or place is desired
the aging process continues in storage canisters and
the flavor imparting phenol levels decline even
further through decomposition. However, these
canisters can not be kept indefinitely, since
phenols that have a beneficial preservative effect
will begin to degrade as well. Treatment from
canisters may be done after one hour of aging and
preferably within one year of aging. Therefore, the
use of tasteless super-purified smoke does not have
to correspond to the operation of the smoke
manufacturing part of the process allowing for much
flexibility and versatility industry wide.
(Ex. 1, ’401 Patent at 14:41-51, ECF No. 288).
The Specification indicates the preferred “different
time” for food treatment is after one hour but within one year
of aging the smoke.

Id.

The Specification states that the

smoke cannot be kept “indefinitely.”

Id.

The particular embodiment does not limit the construction
of the term “different time and place.”
675 F.3d at 1330.

Aventis Pharma S.A.,

The Specification makes clear that the

location and durations for completing the process covered by
the ‘401 Patent is intended to be applied with “much
flexibility and versatility.”

(Ex. 1, ’401 Patent at 14:41-

51, ECF No. 288).
c.

Prosecution History

A patentee may limit the meaning of a claim term by
making a clear and unmistakable disavowal of scope during

prosecution.

Purdue Pharma L.P., 438 F.3d at 1136.

Kowalski’s initial application submitted for the ’401
Patent indicates that the processes for creating the smoke and
treating the food may be done “at the same time or at another
place and time.”
287).

(Ex. B at pp. 25, 27, 47, 49, 61, ECF No.

The Prosecution History states that one object of the

invention was “to store the tasteless super-purified smoke in
either a temporary storage vessel or to pump it into canisters
kept at ambient room temperature for future treatment of
seafood (and other meat, and meat products).”

(Id. at p. 30).

The initial application in the Prosecution History makes clear
that “the use of tasteless super-purified smoke does not have
to correspond to the operation of the smoke manufacturing part
of the process.”

2.

(Id. at p. 50).

Extrinsic Evidence

Extrinsic evidence may aid claim construction but it
cannot be used to contradict the plain and ordinary meaning of
a claim term as defined within the intrinsic record.
Phillips, 415 F.3d at 1322-23.
The plain and ordinary meaning is sufficient and the
Court need not look to extrinsic evidence when the terms is
defined within the intrinsic record.

50

The Specification

provides for optimal durations in time for the processes of
aging, treating, and storing the meat and the smoke.
’401 Patent at 14:24-33; 19-22, ECF No. 288).

(Ex. 1,

The

Specification explains that the canisters containing the smoke
“can not be kept indefinitely, since phenols that have a
beneficial preservative effect will begin to degrade.”
at 14:44-46).

(Id.

A person of ordinary skill in the art would not

believe the Kowalski patent created a process for producing
smoke that could be kept indefinitely to treat food.
A person of ordinary skill in the art can understand the
term “different time and place” in the context of the ’401
patent.

Allvoice Computing PLC, 504 F.3d at 1242.

Court’s Construction of Term 19
A claim term should be given its ordinary meaning unless
the patentee has made clear its adoption of a different
definition or otherwise disclaimed its ordinary meaning.
Ancora Technologies, Inc., 2014 WL 803104, at *2.
The plain and ordinary meaning of the term “a different
time and place” is sufficient.

CONCLUSION
The Court construes the disputed terms as follows:

51

(1)

“Smoke odor” is construed as “smoked or smoky odor.”

(2)

“Smoke taste” is construed as “smoked or smoky
taste.”

(3)

“Smoke flavor” is construed as “smoked or smoky
flavor.”

(4)

“Smoke flavoring” is construed as “smoked or smoky
flavoring.”

(5)

“Smoke” is construed as “the emissions from
heating an organic material.”

(6)

“Heating” is given its plain and ordinary meaning.

(7)

“Burning” is given its plain and ordinary meaning.

(8)

“Organic material” is construed as “carboncontaining material.”

(9)

“Aging” is construed as “allowing the phenols, and
any other remaining carcinogens, in the smoke to
settle.”

(10)

“Filtering” is construed as “a broadly-defined
process including not only passing a gas or
liquid through a porous material, but also the
cooling and settling of the smoke.”

(11)

“Reduce taste imparting components below

52

thresholds for imparting smoke odor and taste”
is given its plain and ordinary meaning.
(12)

“Reduce taste and odor imparting particulates
and vapors below taste and odor recognition
thresholds” is given its plain and ordinary
meaning.

(13)

“Reduce particulate and vapor phenols below
taste and odor recognition thresholds” is given
its plain and ordinary meaning.

(14)

“Removing components that impart smoke odor from
said smoke...whereby the quantity of smoke odor
imparting components removed from said smoke is
adequate to prevent imparting a smoke odor to
said food” is given its plain and ordinary
meaning.

(15)

“Removing a portion of said smoke odor and
flavor imparting components...so as to prevent
smoke flavoring of said food” is given its plain
and ordinary meaning.

(16)

“Filtering components that impart smoke flavor
from said smoke to below limits for imparting
smoke flavoring to food...without imparting a
smoke flavor to said food...to concentrations
53

below odor and taste recognition thresholds for
imparting a smoke flavor to the meat” is given
its plain and ordinary meaning.
(17)

“Eliminating said smoke taste compounds from
said smoke; and treating meat with said smoke;
whereby said treated meat does not have a smoky
taste” is given its plain and ordinary meaning.

(18)

“Eliminating smoke taste compounds from said
smoke; treating meat with said smoke; and
whereby said treated meat does not retain a
smoky taste” is given its plain and ordinary
meaning.

(19)

“A different time and place” is given its plain
and ordinary meaning.

IT IS SO ORDERED.
Dated:

March 31, 2014, Honolulu, Hawaii.

/s/ Helen Gillmor
Helen Gillmor
United States District Judge

William R. Kowalski; Hawaii International Seafood, Inc., v.
Anova Food, LLC; Clearsmoke Technologies, LTD; Does 1-10;
Anova Food, Inc.; Civil No. 11-00795HG-BMK; CLAIM CONSTRUCTION
ORDER
54