GS CLEANTECH CORPORATION v. CARDINAL ETHANOL, LLC
Filing
248
SUPPLEMENTAL ORDER ON CLAIM CONSTRUCTION - SEE ORDER FOR DETAILS. Order denying without prej (348) (354) (386) (387) (388) (389) (391) (392) (462) (467) (477) (482) (483) (488) (493) (498) (503)(508) (513) (518) (523) (528) and denying (6 52) Motion to Strike in case 1:10-ml-02181-LJM-DML. Signed by Judge Larry J. McKinney on 1/29/2013. Associated Cases: 1:10-ml-02181-LJM-DML, 1:10-cv-00180-LJM-DML, 1:10-cv-08000-LJM-DML, 1:10-cv-08001-LJM-DML, 1:10-cv-08002-LJM-DML, 1:10-cv-08003-LJM-DML, 1:10-cv-08004-LJM-DML, 1:10-cv-08005-LJM-DML, 1:10-cv-08006-LJM-DML, 1:10-cv-08007-LJM-DML, 1:10-cv-08008-LJM-DML, 1:10-cv-08009-LJM-DML, 1:10-cv-08010-LJM-DML, 1:10-cv-08011-LJM-DML(CBU)
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF INDIANA
INDIANAPOLIS DIVISION
IN RE: METHOD OF PROCESSING
ETHANOL BYPRODUCTS AND
RELATED SUBSYSTEMS (‘858) PATENT
LITIGATION
RELATED TO ALL CASES
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No. 1:10-ml-02181-LJM-DML
SUPPLEMENTAL ORDER ON CLAIM CONSTRUCTION
This Multi-District Litigation began with respect to one patent, U.S. Patent No.
7,601,858 (the “’858 patent”). Since September 29, 2011, the date the Court issued its
Order on Claim Construction with respect to the disputed claims of the ‘858 patent,
patentees, GS CleanTech Corporation and GreenShift Corporation (collectively,
“CleanTech”), have asserted three additional patents in the ‘858 patent family against
the allegedly infringing Defendants, U.S. Patent Nos., 8,008,516 (the “’516 patent”),
8,008,517 (the “’517 patent”) and 8,283,484 (the “‘484 patent”) (the ‘858, ‘516, ‘517 and
‘484 patents, collectively, the “’858 patent family”). The patents in the ‘858 patent family
share an identical specification and have substantially similar claim terms.
Currently pending before the Court are motions for summary judgment of noninfringement of, alternatively or collectively, the ‘858, ‘516 and/or ‘517 patents, filed by
Defendants Big River Resources Galva, LLC (“Big River”); Big River Resources West
Burlington, LLC (“West Burlington”); Cardinal Ethanol, LLC (“Cardinal”); ICM, Inc.
(“ICM”); LincolnLand Agri-Energy, LLC (“LincolnLand”); David J. Vander Griend
(“Vander Griend”); Iroquois Bio-Energy Co., LLC (“Iroquois”); Al-Corn Clean Fuel (“AlCorn”); Blue Flint Ethanol, LLC (“Blue Flint”); ACE Ethanol, LLC (“ACE”); Lincolnway
Energy, LLC (“Lincolnway”); United Wisconsin Grain Producers, LLC (“UWGP”);
Bushmills Ethanol, Inc. (“Bushmills”); Chippewa Valley Ethanol Co. (“CVEC”); and
Heartland Corn Products (“Heartland”) (all motions, collectively, “Defendants’ NonInfringement Motions”).
Also currently pending before the Court are CleanTech’s
motions for summary judgment of infringement of the ‘858 and the ‘516 patents against
Cardinal, Lincolnway, Blue Flint, UWGP, Al-Corn, Bushmills, CVEC, Heartland,
Iroquois, ACE, LincolnLand, Galva, West Burlington and Adkins Energy, LLC (“Adkins”)
(these Defendants, collectively, the “Ethanol Plant Defendants”).
The parties’ briefs on summary judgment raise the issue of the proper
construction for the term “substantially free of oil,” a term introduced during construction
of the disputed terms of the ‘858 patent, and the term “substantially oil free,” which is a
limitation in one claim of the ‘516 patent and one claim of the ‘484 patent. In reviewing
the parties’ arguments on summary judgment as well as the Court’s Order on Claim
Construction (Dkt. No. 1691), and Order on Motion for Clarification (Dkt. No. 214), it
became apparent that when the Court construed the terms “heating and mechanically
processing the concentrate/concentrated byproduct/concentrated thin stillage to
separate the oil from the concentrate/concentrated byproduct/concentrated thin stillage”
as it appears in claims 1, 10 and 16 and the related term “centrifuging the concentrate
to recover oil” as it appears in claim 8 of the ‘858 patent, the Court did not consider
CleanTech’s arguments that the term did not require the syrup stream leaving the oil
recovery step to be “substantially free of oil.” See Dkt. No. 169, at 20 (“Plaintiffs do not
argue against Defendants’ assertion that the syrup stream leaving the oil recover step is
substantially free of oil.”); Dkt. No. 214, at 1 (“In its Claim Construction Order, the Court
1
All references to Docket Nos. in this Order are to the Master Docket, 1:10-ml-2181-LJM-DML.
2
concluded that the syrup stream leaving the oil recovery step is “substantially free of oil”
in each of the dependent claims.
See Dkt. No. 169 at 20.”).
During the claim
construction hearing, in its response to the Non-Adkins Defendants’2 request for
clarification, in response to Defendants’ Non-Infringement Motions, and in its own
motions for summary judgment, CleanTech argued that the “substantially free of oil”
limitation should not apply to any of the independent claims of the ‘858 patent. See,
e.g., Dkt. No. 179, Claim Constr. Hr’g Tr. at 34-37 (arguing that the terms do not require
that the exiting syrup be substantially free of oil); Dkt. No. 199, at 1-5 (same); Dkt. No.
464, at 13 n.2 (same).
However, CleanTech offered a construction for the term
“substantially oil free” as it appears in the ‘516 patent. See, e.g., Dkt. No. 464, at 14-16.
Further, the parties’ briefing of the summary judgment motions highlight that additional
clarification of the scope of any “substantially free of oil” limitation is necessary.
In addition, in their responses to CleanTech’s motions for summary judgment, the
Ethanol Plant Defendants re-assert their argument that the Court must further define the
“substantially oil” claim limitation by delineating a percentage against which Defendants
may measure their respective systems before any infringement determination is made.
See, e.g., Dkt. No. 688, at 8-9; see also Dkt. No. 692, at 2.
After assessing the parties’ summary judgment arguments, the Court also
considered the terms in the ‘517 and ‘484 patents and concluded that no other
limitations in these patents needed construction. See Dkt. No.745, at 1. The Court then
provided all parties the opportunity to raise disputed terms and to brief arguments
regarding those terms; no party raised an issue. See, generally, Dkt. Nos. 770 & 771.
2
Adkins did not join the other Defendants in arguing that the post-processing syrup was substantially free
of oil.
3
For these reasons, the Court readdresses the proper construction for the terms
“heating
and
mechanically
processing
stillage
to
the
byproduct/concentrated
thin
concentrate/concentrated
byproduct/concentrated
concentrate/concentrated
separate
thin
the
stillage,”
oil
from
“centrifuging
the
the
concentrate to recover oil,” and “disc [sic] stack centrifuging oil from the thin stillage
concentrate to form a substantially oil free concentrate.”
The Court presumes familiarity with the technology of the ‘858 patent family as
set forth in its Order on Claim Construction. Dkt. No. 169, at 2-3.
I.
THE CLAIMS OF THE ‘858 PATENT FAMILY
Clean-Tech accuses all Defendants’ methods of infringing independent claims 1,
8, 10, and 16, and dependent claims 3, 5, 13, and 14 of the ‘858 patent. The Court will
focus on the independent claims because all of the disputed terms appear therein. The
asserted independent claims read:
1. A method of recovering oil from thin stillage, the method comprising, in
sequence: evaporating the thin stillage to remove water and form a
concentrated byproduct; and recovering oil from the concentrated
byproduct by heating and mechanically processing the concentrated
byproduct to separate the oil from the concentrated byproduct, wherein
the concentrated byproduct has a moisture content of greater than 30%
and less than 90% by weight.
***
8. A method of recovering oil from thin stillage, comprising, in sequence:
evaporating the thin stillage to create a concentrate having a moisture
content of greater than 30% by weight and less than about 90% by weight;
and centrifuging the concentrate to recover oil.
***
10. A method of processing whole stillage, comprising: recovering thin
stillage from the whole stillage, the thin stillage including oil and solids;
concentrating the thin stillage including the solids to produce a thin stillage
4
concentrate, wherein the thin stillage concentrate has a moisture content
of greater than 30% and less than 90% by weight; and recovering oil from
the concentrate by a process consisting essentially of heating and
mechanically processing the concentrate to separate the oil from the
concentrate.
***
16. In a method for processing corn to produce ethanol and concentrated
thin stillage, the improvement comprising the step of recovering a product
consisting essentially of oil from the concentrated thin stillage by heating
and mechanically processing the concentrated thin stillage to separate the
oil from the concentrated thin stillage.
‘858 Patent, col.5 I.66 to col.6 l.64.
According to CleanTech’s motions for summary judgment, CleanTech accuses
the Ethanol Plant Defendants’ methods of infringing at least independent claims 1 and 7
of the ‘516 patent. See Dkt. No. 464, at 14-16; Dkt. No. 469, at 12-14; Dkt. No. 474, at
13-15; Dkt. No. 479, at 14-16; Dkt. No. 485, at 13-15; Dkt. No. 490, at 16-18; Dkt. No.
495, at 14-16; Dkt. No. 500, at 12-14; Dkt. No. 505, at 13-15; Dkt. No. 510, at 23-25;
Dkt. No. 515, at 14-16; Dkt. No. 520, at 13-15; Dkt. No. 525, at 12-14 & Dkt. No. 530, at
13-15. Again, all disputed terms appear in the independent claims and the Court will
focus on those. The asserted independent claims read:
1. A method of recovering oil from thin stillage; the method
consisting essentially of, in sequence:
evaporating water from the thin stillage to form a thin stillage
concentrate, wherein the thin stillage concentrate has a moisture content
of greater than 30% and less than 90% by weight before the recovering
step;
mechanically processing the thin stillage concentrate to separate oil
from the thin stillage concentrate; and
recovering the separated oil.
***
5
7.
sequence:
A method of processing whole stillage, comprising, in
separating distiller wet grains and thin stillage from the whole
stillage, the thin stillage including oil and solids;
concentrating the thin stillage including the solids to form a
concentrate having a moisture content of greater than 30% and less than
90% by weight; and
disc [sic] stack centrifuging oil from the thin stillage concentrate to
form a substantially oil free concentrate.
‘516 Patent, col.6, l.11 to col. 6, l52.
Lincolnway, Blue Flint, UWGP, Bushmills, CVEC, Heartland and ACE
(collectively, the “’517 Moving Defendants”) have moved for summary judgment of noninfringement of the ‘517 patent, while CleanTech has moved for summary judgment as
to the ‘517 patent against all of the Ethanol Plant Defendants.
The asserted
independent claim of the ‘517 patent reads:
1. A method of recovering oil from thin stillage, comprising:
evaporating the thin stillage to create a concentrate having a moisture
content of greater than 15% by weight and less than about 90% by weight;
and centrifuging the concentrate to recover oil.
The newly-asserted patent-in-suit, the’484 patent, is a child of the ‘858 patent
and has the same specification as that of the ‘858, ‘516 and ‘517 patents. The ‘484
patent has five independent claims that read:
1. A method of recovering oil from thin stillage; the method
consisting essentially of, in sequence:
evaporating water from the thin stillage to form a thin stillage concentrate,
wherein the thin stillage concentrate has a moisture content of greater than 30%
and less than 90% by weight before recovering step;
mechanically processing the thin stillage concentrate to separate oil from
the thin stillage concentrate;
6
recovering separated oil; and
drying the thin stillage concentrate to reduce the moisture content in the
thin stillage concentrate.
***
8. A method of processing whole stillage, comprising, in sequence:
separating distiller wet grains and thin stillage from the whole stillage, the
thin stillage including oil and solids;
concentrating the thin stillage including the solids to form a thin stillage
concentrate having a moisture content of greater than 30% and less than 90% by
weight;
disc [sic] stack centrifuging oil from the thin stillage concentrate to form a
substantially oil free concentrate; and
drying the thin stillage concentrate to reduce the moisture content in the
thin stillage concentrate.
***
16. A method of recovering oil from thin stillage, comprising, in sequence:
evaporating the thin stillage to create a thin stillage concentrate having a
moisture content of greater than 30% by weight and less than about 90% by
weight;
centrifuging the thin stillage concentrate to recover oil; and
drying the thin stillage concentrate to reduce a moisture content in the thin
stillage concentrate.
***
19. A method of recovering oil from thin stillage, the method comprising,
in sequence:
evaporating the thin stillage to remove water and form a concentrated by
product, wherein the concentrated byproduct has a moisture content of greater
than 30% and less than 90% by weight;
7
recovering oil from the concentrated byproduct by heating and
mechanically processing the byproduct to separate the oil from the concentrated
byproduct; and
drying the concentrated byproduct to reduce the moisture content in the
concentrated byproduct.
***
30. A method of recovering oil from thin stillage; the method comprising
evaporating water from the thin stillage to form a thin stillage concentrate,
wherein the thin stillage concentrate has a moisture content of greater than 30%
and less than 90% by weight;
mechanically processing the thin stillage concentrate to separate oil from
the thin stillage concentrate; and
recovering the separated oil.
‘484 Patent, col.6, l. 9 to col.8, l.37.
The parties agree that construction of the claims of the ‘858 patent is applicable
to the claim construction of both the ‘516 and ‘517 patents because the “same term or
phrase should be interpreted consistently where it appears in claims of common
ancestry.” Dkt. No. 566, CleanTech’s Surreply, at 18 (citing Warrior Lacrosse, Inc. v.
STX, LLC, No. 04-70363, 2005 WL 1378752, at *13-14 (E.D. Mich. June 2, 2005)). See
also Dkt. No. 458, Defendants’ (except Adkins) Reply, at 13 (citing Omega Eng’g, Inc. v.
Raytech Corp., 334 F.3d 1314, 1334 (Fed. Cir. 2003)). The Court concludes that the
construction of the ‘858 patent applies to all of the asserted claims in the ‘516, ‘517 and
’484 patents because no party has presented a compelling reason not to do so. See Z4
Techs., Inc. v. Microsoft Corp., 507 F.3d 1340, 1348 (Fed. Cir. 2007) (citing Omega
Eng’g, 334. F3d at 1334).
8
II.
THE “SUBSTANTIALLY OIL FREE” LIMITATION
A.
The Limitation Is Not Required In All Of The Claims
After close consideration of the ‘858 patent family, the prosecution history of the
‘858 patent, the parties’ arguments at the claim construction hearing as well as the
parties’ briefs on clarification and summary judgment, the Court concludes that the ‘858
patent discloses, but does not require that the post-oil recovery step syrup stream be
“substantially free of oil.” The Court starts with the language of the claims themselves.
See Z4 Techs., 507 F.3d at 1348 (citing Phillips v. AWH Corp., 415 F.3d 1303, 1312
(Fed. Cir. 2005) (en banc)). None of the claims of the ‘858 patent require that the postoil recovery step syrup stream be substantially free of oil. See, generally, ‘858 Patent,
col.5, l.65 to col.6, l.64. In fact, in the entire ‘858 patent family, the term “substantially
oil free concentrate” appears only in claim 7 of the ‘516 patent and the substantially
similar claim 8 of the ‘484 patent. See ‘516 Patent, col.6, l.42; ‘484 Patent, col.6, l.47.
Further, there is one reference to this phrase in the specification, but it is almost
an afterthought.
The specification recites that in one example of the invention,
“[r]ecombining the syrup (which is substantially free of oil) from the centrifuge 14 with
the distillers wet grains,” can result in further efficiencies upon drying. ‘858 Patent,
col.4, l.54.
There is no reference to the phrase in any recitation of the multiple
embodiments and/or aspects of the invention in the remainder of the specification. Id.
col.2, l.23 to col.3, l.28. See also id. col.5, l.7 to col.5, l.63 (describing “EXAMPLE 2”
and Figures 3 and 4). These findings point away from inclusion of the limitation in the
claims of the ‘858 patent, or similar claims in the ‘516, ‘517 and ‘484 patents, because
the primary focus of the invention was elsewhere – namely, on the recovery of oil.
9
However, as the Defendants, except Adkins, pointed out during the claim
construction hearing, in response to a U.S. Patent and Trademark Office (“USPTO”)
rejection over, inter alia, prior art U.S. Patent Application Ser. No. 2004/0087808 to
Prevost (“Prevost”), the patentees disclose formation of a “substantially oil free
concentrate” through centrifugation as an alternative difference between Prevost and
the ‘858 patented invention. Dkt. No. 52-5, USPTO Prosecution History for U.S. Patent
No. 7,601,858 (“’858 Pros. His.”), at 128. Specifically, the patentees stated:
It is clear that Prevost fails to teach or suggest a post evaporation
process for recovering oil from a thin stillage concentrate that includes,
inter alia, mechanically processing the thin stillage concentrate to separate
oil from the thin stillage concentrate (Claim 1) or disc [sic] stack
centrifuging oil [sic] to form a substantially oil free concentrate (Claim 43
[sic]). Prevost is fairly explicit in its teaching of a solvent extraction
process for removing oil from the thin stillage syrup obtained following
evaporation as set forth below.
An oil removal step can be performed on either the
thin stillage before evaporation or on the syrup after
evaporation. If performed prior to evaporation, an oil
removal process such as centrifugation is preferred whereas
after evaporation a solvent extraction process is
preferred to extract at least a portion of the oil from the
syrup.
(Prevost, paragraph 14, emphasis added).
A solvent extraction process is not the same as mechanically
processing the thin stillage concentrate to separate oil from the thin
stillage concentrate or disc [sic] stack centrifuging oil [sic] to form a
substantially oil free concentrate as claimed. In Prevost’s solvent
extraction process, the thin stillage concentrate (obtained after
evaporation) is contacted by batch, semi-batch, or continuously with a
solvent so as to extract oil therefrom. Applicants have carefully studied
Prevost and can find no teaching or suggestion of a post evaporation
process for recovering oil from the concentrated byproduct by
mechanically processing as in claim 31 [sic] or by disc stack centrifuging
as in claim 43 [sic]. Prevost’s solvent extraction process is detailed in
paragraphs 26-29.
10
Id. (all emphasis in original). The Defendants contend that the statement “as claimed”
in the underlined portion of the second explanation is a clear disavowal of claim scope
as to all claims of the ‘858 patent and requires the concentrate or syrup after the oil
recovery step to be substantially free of oil. The Court disagrees.
First, the phrase Defendants rely upon in these passages as written, “centrifuging
oil to form a substantially oil free concentrate,” does not appear in any of the claims in
the ‘858 patent family. Instead, the claims refer to processing thin-stillage concentrate
or processing oil from thin-stillage concentrate. See, generally, ‘858 Patent, col.5, l.64
to col.6, l.64; ‘516 Patent, col.6, ll.11-52; ‘517 Patent, col. 6, ll.32-39; ‘484 Patent, col.6,
l.9 to col. 8, l.37. On their face, then, these statements are irrelevant to the claims of
the ‘858 patent family. If the Court presumes that the patentees intended for these
statements to refer to the language of the claims, then it must conclude that they are
referring to the language of claim 7 of the ‘516 patent and claim 8 of the ‘484 patent,
which contain substantially similar language, but with the addition of “from the thin
stillage concentrate” as occurred during the prosecution of the ‘516 Patent. See Dkt.
No. 403-4, at 3 (amending claim 43 to include the language “from the thin stillage
concentrate” to the disk stack centrifuging step); ‘516 Patent, col.6, ll.41-42 (stating
“disc [sic] stack centrifuging oil from the thin stillage concentrate to form a substantially
oil free concentrate”); ‘484 Patent, col.6, ll.46-47 (same). Whatever the reason for the
error in the statements in the prosecution history, the Court cannot conclude that these
references limit all the claims of the ‘858 Patent or the other claims that do not
specifically include the limitation in the remaining patents in the family.
11
Both of the patentee’s statements repeat their prior statements to the patent
examiner about the differences between the ‘858 claimed invention and Prevost: postevaporation recovery of oil through mechanical process or centrifuging rather than
through solvent extraction. See, e.g. id. at 104 (distinguishing Prevost on the grounds
that the prior art does not teach a post-evaporation of heating and mechanically
processing or centrifuging); id. at 124-25 (distinguishing Minowa, et al.,Nat’l Inst. For
Resources & Env’t, Ibaraki, 1993, in light of Prevost on similar grounds). These are
stated in the alternative and, although the Defendants argued that mechanical
processing as claimed in the ‘858 patent should be limited to centrifuging, the Court
disagreed and will not re-address that argument here.
In addition, the second statement by the patentees is merely a restatement of the
first, which specifically references exemplary claims, claim 1 and claim 43.
As
CleanTech pointed out at the claim construction hearing, see Dkt. No. 179, at 34-36,
there was no claim 43 before the patent examiner associated with the ‘858 patent. See,
generally, Dkt. No. 52-5, at 1-285. Furthermore, in response to the USPTO’s office
action rejecting the ‘516 patent claims, the inventors made the same arguments, but in
one paragraph referenced claim 31, instead of claim 1, but always referring to claim 43
with respect to the latter phrase.
See Dkt. No. 403-4, at 6 & 9-10.
Whether the
reference to claim 43 in the ‘858 Patent prosecution history is a typographical error,
sloppiness or negligence, any disavowal of claim scope, if any, was only as to claim 43,
which specifically requires the post-recovery syrup to be “substantially oil free.” Later in
the same paragraph the patentees highlight that Prevost does not teach or suggest a
post-evaporation process for recovering oil and never even mention the formation of a
12
substantially oil free concentrate. Dkt. No. 52-5, at 128. Moreover, adding the limitation
of “substantially oil free” to claims that do not even mention the term, like claims 1, 8, 10
and 16 of the ‘858 patent, would eviscerate the broader ground upon which the
patentees were distinguishing Prevost as to both the ‘858 and ‘516 patents – postevaporation recovery of oil.
Finally, the patentees continually pointed out to the examiner that the
concentration of the thin stillage as required by all of the claims in the ‘858 patent family
free up bound oil. See Dkt. No. 52-5, at 127 (stating that creation of a thin stillage
concentrate “is a critical feature because it is believed that the formation of the thin
stillage concentrate by evaporation frees some of the bound oil within the thin stillage”).
This distinguishing feature is even more important in combination with the other fact
pointed to by the patentees about the Prevost application:
it teaches away from
centrifugation for stillage of any type with a moisture content above 15%. See Dkt. No.
52-5, at 127 (describing Prevost’s requirement for less than 15% water for oil recovery);
see also Dkt. No. 12-3, Prevost, at ¶ 14 (teaching that if an oil removal step is used for
the thin stillage “prior to evaporation, an oil removal process such as centrifugation is
preferred whereas after evaporation a solvent extraction process is preferred to extract
at least a portion of the oil from the syrup”); id. at Claim 19 (requiring evaporation of the
thin stillage to produce a syrup stream containing less than 15% water by weight before
oil is removed). Unless there is heating of the thin stillage concentrate during the oil
recovery step (which is not taught by Prevost), no claims in the ‘858 patent family
require a moisture level in the thin stillage concentrate below 30%. See Dkt. No. 52-5,
at 124 (describing the requirements of the claimed invention of the ‘858 patent); see,
13
generally, ‘858 Patent, Claims; ‘516 Patent, Claims; ‘517 Patent Claims; ‘484 Patent
Claims.
For these reasons, the Court concludes that only claim 7 of the ‘516 patent and
claim 8 of the ‘484 patent require that the post-oil recovery step syrup stream be
“substantially oil free.”
B.
The Scope Of The “Substantially Oil Free” Limitation
This determination does not end the Court’s inquiry regarding this limitation,
however, because CleanTech has now asserted the ‘516 and ‘484 patents against all
Defendants, and because the parties’ summary judgment briefs raise issues regarding
the scope of the term. The Defendants argue that “substantially oil free concentrate”
must be construed to require “a comparison between the oil concentration in the
incoming thin stillage stream and the outgoing remaining-concentrate stream” because
of “the cause-and-effect terminology in the patent claims.”
Dkt. No. 688, at 13.
Defendants also contend that they argued in their claim construction briefs that oil
recovery percentage was the proper method for determining if the post-recovery syrup
stream was substantially free of oil and CleanTech cannot now assert otherwise
because it did not offer an alternative construction in its claim construction briefs. See
Dkt. Nos. 349, at 16 & 394, at 24-25. Defendants further assert that CleanTech has
acknowledged the appropriateness of the input/output comparison methodology in its
Supplemental Answers to Al-Corn Clean Fuel’s Second Set of Interrogatories
(“CleanTech’s Supp. Al-Corn Ans.”). Dkt. No. 394, at 21, ¶ 68. The Defendants also
argue that the patents-in-suit themselves disclose only one way to determine whether
the post-oil recovery thin stillage stream is “substantially oil free” and, quantitatively, it
14
may contain only 5% or less of the oil in the incoming stream. See Dkt. Nos. 349, at 1619 & 394, at 4-5 & 24-27. Specifically, Provisional Application No. 60/602050 (the
“Provisional”), incorporated by reference into all of the patents in the ‘858 patent family,
distinctly references Example 1 as “based on actual experimental data” and states in
Figure 2 that the patented process recovers “the majority of the oil,” which equated to
“95% recovery.” Dkt. No. 349, at 350-1, at 4, ll.16-17 & Fig. 2. In other words, only 5%
of the oil in the incoming concentrated thin stillage remains in the post-recovery syrup,
which must set the boundary for “substantially free of oil.” Lastly, Defendants contend
that the prosecution history supports their construction. Dkt. No. 458, at 6, 11-13, 2122.
CleanTech argues that there is nothing in the claim language, the Court’s prior
claim construction orders, the specification or the prosecution history that requires a
particular recovery rate of oil. See, e.g., Dkt. No. 419, at 2, 4, 24 & 26-29;3 Dkt. No.
566, at 6-10.4 In addition, CleanTech avers that Defendants’ reliance on the results set
forth in Figure 2 improperly limits any interpretation of “substantially oil free” to the
results obtained with a preferred embodiment, which the Court has already determined
is improper. Id. at 27-28. Similarly, CleanTech states that the Defendants’ reliance on
the claim construction briefing or CleanTech’s Supp. Al-Corn Ans. as evidence that
CleanTech agrees with them is also improper. Id. at 39-40. Moreover, CleanTech
asserts that the proper construction for the scope of the “substantially oil free” limitation
3
For ease of reference, the Court is citing to CleanTech’s Opposition to Motions for Summary Judgment
of NonInfringement by ACE, Al-Corn, Blue Flint, Bushmills, CVEC, Heartland, Lincolnway and UWGP;
however, the arguments presented therein are substantively identical to the arguments in CleanTech’s
opposition to Motions for Summary Judgment of NonInfringement by ICM, Vander Griend, Cardinal, West
Burlington, Galva and LincolnLand. Compare Dkt. No. 419 with Dkt. No. 410.
4
The portion of CleanTech’s Surreply cited here is not the subject of the Moving Defendants’ Motion to
Strike (Dkt. No. 652) and by such reference the Court makes no determination at this time on the merits
of Defendants’ Motion to Strike.
15
compares the oil concentrations of the two streams exiting the mechanical separation
device. Id. at 29-30.
The Court concludes that, in the context of the ‘858 patent family, the term
“substantially oil free” has an ordinary meaning of largely or mostly oil free, but is
measured by a comparison of the oil concentration in the incoming thin stillage and the
oil concentration in the resulting syrup.
With respect to the absolute percentages
advocated by the Defendants’, the Court concludes that the argument improperly seeks
to import limitations from the specification into the claims. First, the Defendants cannot
point to any language in the claims, the specification or the prosecution history that limit
the substantially oil free limitation to the quantities listed in Figure 2 of the ‘858 patent
family. There simply is none. The claims, as recited above, are completely devoid of
any reference to numerical quantities. Further, references in the specification to the
content of oil in the post-recovery syrup stream are equally vague.
For example,
describing Figure 2, the specification reads: “centrifuge 14 . . . produces syrup having a
moisture content of 82.5% by weight, but with far less oil in view of the preceding
recovery step.
Recombining the syrup (which is substantially free of oil) from the
centrifuge 14 …;” ‘516 Patent, col.4, ll.50-53; and “removal of the majority of the oil
before the drying step makes the process more efficient.” Id. col.4, ll.63-65. Similarly,
there is no numerical reference for the content of oil in the post-recovery syrup stream
by the patentees in the prosecution history, and the Defendants could not point to any.
See, generally, Dkt. Nos. 52-5 (Prosecution History for ‘858 Patent); 403-4 (Office
Action Response for ‘516 Patent); 458 (Defendants’ Reply).
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In addition, there is no suggestion in the prosecution history that the claims were
rejected based on the patentees’ failure to claim a specific amount of oil that remained
in the post-recovery step syrup. Figure 2, as set forth in either the Provisional or the
‘858 patent family specifications, does contain representative quantities; however, there
is no reason to import those quantities into the claims because the patentees did not
use them as a way to distinguish the patented invention from any prior art reference.
Like the ‘858 patent family, Prevost does not specify the amount of oil recovered from
the thin stillage. See Dkt. No. 120-3, Prevost, at 6 (claims 19-23). Therefore, it is
unclear how the patentee’s assertions that the ‘858 and ‘516 patented inventions are
different could require the “substantially oil free” term to be limited to 5% or less oil. As
the Court stated in its Order on Claim Construction with respect to the “oil” limitation,
“Figure 2 does not limit the claims to its terms explicitly. The cases are clear that the
Court may not limit claims to preferred embodiments,” and it will not do so with respect
to the “substantially oil free” limitation. Dkt. No. 169, at 21-22 (citing Kara Tech. Inc. v.
Stamps.com Inc., 582 F.3d 1341, 1348 (Fed. Cir. 2009)).
Defendants also argue that the principles that led to a numerical limit for the
“substantially free” limitation in the patent-in-suit in, for example, Johns Hopkins
University v. Cellpro, Inc., necessitate the same result here. 152 F.3d 1342, 1354-56
(Fed. Cir. 1998). In Johns Hopkins, the patent examiner had rejected the claims based
on the undefined scope of the “substantially free” limitation, which referred to the purity
of a suspension created by the disclosed technique.
Id. at 1354.
The patentees
responded claiming that the limitation should have its ordinary meaning of “no
appreciable number” and referred to the measurement techniques available in the art at
17
the time of the invention, which allowed for as much as 10% contaminant. Id. at 135455. However, the Johns Hopkins patent-in-suit contained a table of results, using the
state-of-the-art measurement techniques, which showed the only embodiment of the
invention and disclosed the highest possible purity (90%). Id. at 1355. The Federal
Circuit affirmed the district court’s conclusion that the table set the outer boundary of the
purity because an ordinary meaning alternative, as suggested by the patentees, would
exclude the preferred embodiment.
Id. at 1355 (citing Specialty Composites v. Cabot
Corp., 845 F.2d 981, 987 (Fed. Cir. 1988); Pall Corp. v. Micron Separations, Inc., 66
F.3d 1211, 1219 (Fed. Cir. 1995); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576,
1583 (Fed. Cir. 1996)). The Johns Hopkins court repeated that “[a] claim construction
that does not encompass a disclosed embodiment is thus ‘rarely, if ever, correct and
would require highly persuasive evidentiary support.’” Id. (quoting Vitronics, 90 F.3d at
1583).
With respect to the ‘858 patent family, there is no suggestion in the ‘858 Patent
prosecution history, the ‘516 Patent prosecution history, or the patents themselves that
the ordinary meaning of the term “substantially oil free concentrate” would exclude the
preferred embodiment.
The references in the specification state, alternatively,
“removing at least a portion of the oil from the concentrate,” ‘858 Patent, col.3, ll.23-24;
“centrifuge 14 … produces syrup having a moisture content of 82.5%, but with far less
oil in view of the preceding recovery step,” id. col.4, ll.52-53; “[r]ecombining the syrup
(which is substantially free of oil) from the centrifuge 14,” id. col.4., ll.54-55; “removal of
the majority of the oil before the drying step,” id. col.4, ll.63-64; and “the syrup
recovered from the centrifuge may be evaporated and processed again in a further
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effort to recover oil,” id. col.5, ll.46-48. See also Dkt. No. 350-1, Provisional, at Figure 2
(stating that the patentees recovered the “majority of the oil” or a “95% recovery” in the
preferred embodiment). The most limiting language is “removal of the majority of the
oil,” which only restates the term “substantially oil free” and adds no further illumination.
But there is no need for any further illumination because these passages, and even the
nearly identical disclosures in the Provisional, point to the ordinary meaning and there is
no evidence of a rejection of the ‘858 patent family of claims based on indefiniteness of
the substantially oil free limitation.
Turning to the parties’ arguments regarding whether the term “substantially oil
free concentrate” requires measurement by a comparison of the oil in the incoming thin
stillage concentrate with that in the post-recovery step syrup (as proposed by the
Defendants) or a comparison of the oil in the two post-recovery step streams (as
proposed by CleanTech), the Court concludes that the claim language and the
specification support the Defendants’ construction. As the Defendants point out, the
relevant claims are written in cause and effect language because they require the
substantially oil free concentrate be “form[ed]” by the oil recovery step. ‘516 Patent,
col.6, ll.41-42; ‘484 Patent, col.6, ll.46-47. Specifically, the relevant step requires: “disc
[sic] stack centrifuging oil from the thin stillage concentrate to form a substantially oil
free concentrate.” Id. The emphasis in this claim language is on what is created or
formed by the thin stillage concentrate through the oil recovery step – a substantially oil
free concentrate – therefore, the relevant measurement is a comparison of the oil in the
thin stillage going into the centrifuge and the oil in the syrup produced by the process.
19
This construction is supported further in the specification. In the description of
the preferred embodiment in Figure 2, the specification states that “centrifuge 14 . . .
produces syrup having a moisture content of 82.5% by weight, but with far less oil in
view of the preceding recovery step.”
‘516 Patent, col.4, ll.50-53.
This statement
specifically teaches that the outgoing syrup stream is “substantially oil free” when it has
“far less oil in view of the preceding recovery step,” which can only mean that to practice
the disclosed method requires production of a syrup stream largely free of oil when
compared to the incoming thin stillage stream. A later reference with respect to Figure
2 suggests the same comparison when it discloses that the recovery step removes the
majority of the oil from the thin stillage to make the further processing of the outgoing
syrup more efficient. ‘516 Patent, col.4, ll.63-65 (“removal of the majority of the oil
before the drying step makes the process more efficient”).
Again, this disclosure
highlights that the starting point for determining whether the exiting syrup is substantially
oil free is the oil concentration in the thin stillage going into the centrifuge.
For all of these reasons, the Court concludes that the “substantially oil free”
limitation in claim 7 of the ‘516 Patent and claim 8 of the ‘484 Patent means the syrup
exiting the centrifuge is substantially oil free compared to the incoming thin stillage,
where substantially has its ordinary meaning of largely or mostly.
III. THE “OIL” LIMITATION
As discussed at length by the Court in its Order on Claim Construction, the
Defendants argued that the specification and prosecution history of the ‘858 patent
require that the oil recovered from the patented process is without water and solids.
See Dkt. No. 169, at 20-23; see also Dkt. No. 179, at 85-97. The Court rejected the
20
Defendants’ arguments and concluded that the post-mechanically processed oil stream
is “substantially oil.” See Dkt. No. 169, at 23. In response to CleanTech’s motions for
summary judgment, the Ethanol Plant Defendants, excluding Adkins, assert that further
construction of the scope of “substantially oil” is necessary for a trier of fact to determine
if their processes infringe the ‘858 patent family and, in conjunction with their argument
that the substantially oil free limitation should require 5% or less oil in the post-recovery
step syrup, imply that the “substantially oil” limitation should mean that the oil recovered
must be nearly pure oil, or at least 95% or more of the oil in the incoming thin stillage.
See Dkt. Nos. 688, at 8-9; 692, at 1-8. Citing multiple cases regarding the requirements
of 35 U.S.C. § 112 ¶ 2, which requires a patentee to particularly point out and distinctly
claim the subject matter that the inventors regard as their invention, Cardinal specifically
argues that the Court should clarify the precise parameters a “substantially oil” stream
and that the patent specification and the prosecution history support a conclusion that
“the degree of variance from 100% oil should be very narrow, e.g., trace amounts of
contaminants.” Dkt. No. 692, at 2-8.
With respect to their argument that the Court must delineate a specific
percentage of oil in the post-recovery step oil stream, the Defendants, repeat their
original claim construction arguments, which were rejected by the Court in its Order on
Claim Construction. Dkt. No. 169, at 20-23. The Court declines to readdress those
arguments here, however, it will address the Defendants’ reliance on Seattle Box Co. v.
Industrial Crating & Packing, Inc., 731 F.2d 818 (Fed. Cir. 1984). The Defendants cite
this case for the proposition that the Court must determine whether the patent
specification provides some standard for measuring words of degree such as
21
“substantially” when the patent or prosecution history suggests one. See, e.g., Dkt. No.
692, at 6. From there, the Defendants reason that the specification only discloses the
recovery rates in Figure 2, therefore, the patentees must have meant for those numbers
to define the purity of the oil recovered. See, e.g., id. at 7-8.
In the Court’s view, Seattle Box merely confirms that the Court’s construction of
the term oil to mean “substantially oil” with its ordinary meaning of largely or mostly, the
contours of which is a factual issue, is the correct one. In Seattle Box, the Federal
Circuit affirmed the lower court’s determination that neither the specification nor the
prosecution history of the patent-in-suit in that case required that the term “substantially
equal to” be made more definite for the patent to be valid. 731 F.2d at 826. Then, with
respect to infringement, the Seattle Box court stated that “the trier of fact must
determine the scope of an imprecise phrase such as ‘substantially equal to,’ which by its
very nature, has a fact-dependent meaning.” Id. at 829. The Federal Circuit taught that
since the claims issued with a “substantially equal to” limitation, “some leeway is
appropriate in determining literal infringement,” but statements made during prosecution
may estop a patentee from asserting that the claims have a broad effect under the
doctrine of equivalents. Id.
With respect to the ‘858 patent family, the only indefiniteness objection raised in
the prosecution history of the ‘858 Patent had nothing to do with the elements of the
claims that contain the “substantially” language. See Dkt. No. 52-5, at 84 (rejecting
Claim 31 under 35 U.S.C. § 112 for omitting steps); id. at 112 (withdrawing the
objection).
To the extent the Defendants seek to use Figure 2 or the patentees’
statements during prosecution to further limit the Court’s “substantially oil” construction
22
or the “substantially oil free” limitation, the Court declines the invitation. As discussed in
the Order on Claim Construction and herein, none of the intrinsic evidence limits the two
contested phrases to any particular percentages.
Further, the plain meaning of
“substantially” in the context in which they are used in the patents or the claim
construction of “largely or mostly” adequately conveys both the likely amounts and that
the likely range of equivalents in this case is small.
IV.
PENDING SUMMARY JUDGMENT MOTIONS
As stated in this Order, the Court has considered the parties’ extensive briefing
on the summary judgment motions and utilized the arguments made regarding further
claim construction of disputed terms in this Order. However, the Court recognizes that
the decisions in this Order will have an impact on the parties’ positions with respect to
infringement. In addition, as discussed in the introduction, since the date the parties
filed their summary judgment motions the Court has allowed CleanTech to amend its
complaints against each Defendant such that nearly all patents in the ‘858 patent family
are asserted against each of them. For both of these reasons, the currently-briefed
summary judgment motions likely do not address all the arguments the parties wish to
raise with respect to CleanTech’s allegations of infringement and, to resolve the
infringement issues fairly, the Court will require the parties to address the allegedly
infringing processes under the new claim construction. Under these circumstances, the
Court concludes that supplemental briefing on infringement will not suffice. Therefore,
all pending motions for summary judgment are hereby DENIED without prejudice and
with leave to re-file them according to the Revised and Amended Order on Case
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Management, Dkt. No. 780, and the Defendants’, with the exception of Adkins, Motion
to Strike, Dkt. No. 652, is DENIED.
V.
SECOND REVISED CLAIM CONSTRUCTION CHART
For the reasons stated in the Order on Claim Construction dated September 29,
2011, and for the reasons stated herein, the Court construes the disputed terms of the
‘858 patent family as follows:
Claim Term
Construction
“concentrate” / “concentrated byproduct” / “syrup containing water, oil and solids
“concentrated thin stillage”
resulting from the concentrating or
evaporating process”
“mechanically processing”
“to subject to a mechanical device (or
devices) to effect a particular result”
“heating and mechanically processing the “the Concentrate Term (as set forth above)
concentrate/concentrated
subjected to heat and a mechanical device
byproduct/concentrated thin stillage to (or devices) to extract a product that is
separate
the
oil
from
the substantially (meaning largely or mostly)
concentrate/concentrated
oil from the Concentrate Term (as
byproduct/concentrated thin stillage”
construed above)”
“centrifuging the concentrate to recover oil” “processing the concentrate (as set forth
above) with a centrifuge to separate the oil
from the concentrate so that the oil stream
coming out of the centrifuge is
substantially (meaning largely or mostly)
oil”
“substantially oil free concentrate”
“the syrup exiting the centrifuge is largely
or mostly oil free compared to the
incoming thin stillage”
IT IS SO ORDERED this 29th day of January, 2013.
________________________________
LARRY J. McKINNEY, JUDGE
United States District Court
Southern District of Indiana
Electronically distributed to all registered attorneys via CM/ECF.
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