Layne Christensen Company v. The Purolite Company

Filing 344

MEMORANDUM AND ORDER - It is ordered that certain terms in the patent at issue in this action are construed as set forth herein.. Signed by District Judge John W. Lungstrum on 7/22/2011. (ses)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF KANSAS
LAYNE CHRISTENSEN COMPANY and
DR. ARUP K. SENGUPTA

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Plaintiffs,
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v.
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BRO-TECH CORPORATION,
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d/b/a THE PUROLITE COMPANY,
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Defendant.
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_______________________________________)

Case No. 09-2381-JWL

MEMORANDUM AND ORDER
Plaintiff Layne Chistensen Company asserts a claim against defendant Bro-Tech
Corporation, d/b/a The Purolite Company for infringement of United States Patent No.
7,291,578 (“the Patent”), which describes an invention for the removal of arsenic and
other contaminants from fluids.1 The inventor, Arup K. SenGupta, who licensed the
patented technology to plaintiff’s predecessor-in-interest, was added as a required party
after the initiation of the lawsuit. Plaintiff and defendant disagree on how and whether
various terms in the claims of the Patent should be construed, and the Court has
considered the parties’ written submissions and the parties’ argument at a hearing
conducted by the Court on July 5, 2011. The Court construes the various terms at issue
Plaintiff also asserts a state-law claim for breach of an agreement between
defendant and plaintiff’s predecessor-in-interest. Defendant asserts counterclaims for
a declaration of non-infringement and for breach of contract.
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as set forth herein.

I.

Claim Construction Standards

Claim construction is governed by the methodology set forth by the Federal
Circuit Court of Appeals in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en
banc). It is a bedrock principle of patent law that the claims of the patent define the
patentee’s invention. Id. at 1312. Thus, claim construction begins with the words of the
claim itself. Id. The words of a claim should be given their ordinary and customary
meaning as understood by a person of ordinary skill in the art in question at the time of
the invention. Id. at 1312-13. “[T]he claims themselves provide substantial guidance
as to the meaning of particular claim terms.” Id. at 1314. Both “the context in which a
term is used in the asserted claim” and the “[o]ther claims of the patent in question” are
useful for understanding the ordinary meaning. Id.
The claims do not stand alone, but are part of “a fully integrated written
instrument.” Id. at 1315. Therefore, they “must be read in view of the specification, of
which they are a part.” Id. (quotation omitted). In fact, the specification is “the single
best guide to the meaning of a disputed term” and is often dispositive. Id. The
specification may reveal a special definition given to a claim term by the patentee that
differs from the meaning it would otherwise possess, in which case the inventor’s
lexicography governs. Id. at 1316. In other cases, it may reveal an intentional disclaimer
or disavowal of claim scope by the inventor; in that case, “the inventor has dictated the
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correct claim scope, and the inventor’s invention, as expressed in the specification, is
regarded as dispositive.” Id. The fact that the specification includes limited and specific
embodiments is insufficient to define a term implicitly, and it is improper to confine the
scope of the claims to the embodiments of the specification. Id. at 1323. “The
construction that stays true to the claim language and most naturally aligns with the
patent’s description of the invention will be, in the end, the correct construction.” Id. at
1316 (quotation omitted).
Moreover, the court must be careful not to import limitations from the
specification into the claim. Id. at 1323. In walking the “fine line” between using the
specification to interpret the meaning of a claim and importing limitations from the
specification into the claim, the court must “focus . . . on understanding how a person of
ordinary skill in the art would understand the claim terms.” Id. The purposes of the
specification are to teach and enable those of skill in the art to make and use the
invention and to provide a best mode for doing so. Id. Reading the specification in
context should reveal whether the patentee is setting out specific examples of the
invention to accomplish those goals, or whether the patentee instead intends for the
claims and the embodiments in the specification to be strictly coextensive. Id. Thus, the
court’s task is to determine “whether a person of skill in the art would understand the
embodiments to define the outer limits of the claim term or merely to be exemplary in
nature.” Id.
The court should also consult the patent’s prosecution history, if in evidence. Id.
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at 1317. Like the specification, the prosecution history “provides evidence of how the
PTO [Patent and Trademark Office] and the inventor understood the patent.” Id. “Yet
because the prosecution represents an ongoing negotiation between the PTO and the
applicant, rather than the final product of that negotiation, it often lacks the clarity of the
specification and thus is less useful for claim construction purposes.” Id.
Finally, the court may consult extrinsic evidence such as expert and inventor
testimony, dictionaries, and learned treatises. Id. These have all been recognized as
tools that can assist the court in determining the meaning of particular terminology. Id.
at 1318. Extrinsic evidence may be helpful to the court in understanding the technology
or educating itself about the invention. Id. In particular, because technical dictionaries
collect accepted meanings for terms in various scientific and technical fields, they can
be useful in claim construction by providing the court with a better understanding of the
underlying technology and the way in which one skilled in the art might use the claim
terms. Id. at 1318. “However, conclusory, unsupported assertions by experts as to the
definition of a claim term are not useful to a court.” Id. Extrinsic evidence is less
reliable than intrinsic evidence in determining the construction of claim terms, and
therefore the court should discount any expert evidence that is at odds with the intrinsic
evidence. Id.

II.

Agreed Constructions

With respect to five terms of which defendant seeks construction, plaintiff argues
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that no construction is necessary, although it has agreed with defendant on particular
meanings for those five terms if construction is deemed necessary. Plaintiff argues
generally that these terms are commonly understood by laypersons, but it has not
attempted to explain why that is so with respect to any one of these five terms.
The Court agrees with defendant that these terms are technical and would not be
easily or commonly understood by jurors, and that construction of these terms would be
helpful to the jury. Accordingly, the Court construes these terms as agreed by the
parties, as follows:
“Selective adsorbent” is construed to mean an adsorbent that is preferentially
adsorbent of some species compared to some other species.
“Salt of a metal” is construed to mean the compound formed when the hydrogen
of an acid is replaced by a metal, such as a solution of a ferrous salt, such as ferrous
sulphate, ferrous ammonium sulfate, ferrous chloride, or ferrous acetate.
“Anionic oxidant” is construed to mean any anionic oxidant compound, such as
potassium permanganate.
“A permanganate” is construed to mean a salt containing the anion MnO4-, such
as potassium permanganate.
“Ligand” is construed to mean substances, such as arsenates, chromates,
oxalates, phosphates, phthalates, arsenite, monovalent arsenate, divalent arsenate,

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arsenites, chromates, molybdates, selenites, and vanadate, including arsenic.2

III.

Disputed Constructions

Defendant has also proposed constructions for six other terms found in the claims
of the Patent. Plaintiff again argues that no term needs construction. The Court
concludes in each instance, however, that the particular term would not be commonly
understood by the jury or that construction is necessary to resolve a dispute between the
parties concerning the meaning of the term or the scope of the claims. See O2 Micro
Int’l v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008) (“When the
parties present a fundamental dispute regarding the scope of a claim term, it is the court’s
duty to resolve it.”). Accordingly, the Court considers the constructions proposed by
plaintiff in the alternative, and it construes these terms as follows.

A.

“Adsorbent”

The parties dispute the proper construction of the term “adsorbent” in Claims 1
and 15 of the Patent. Claim 1 reads as follows:
1. A method for synthesizing a selective adsorbent, the method
comprising the steps of:
reacting a material that exhibits anion exchange behavior with an

This agreed definition appears to be redundant, including “chromates” twice and
both “arsenite” and “arsenites”, but the Court has adopted it as agreed by the parties.
This construction can certainly be modified at a later time by agreement of the parties
to correct any such problem.
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anionic oxidant to produce an intermediate; and
reacting, with said intermediate, a solution of a salt of a metal,
said salt being capable of being oxidized, thereby
precipitating and dispersing a salt of said metal throughout
the intermediate by the action of the oxidant and producing
an adsorbent capable of exchanging anions.
(Emphasis added.) Claim 15 reads as follows:
15. An adsorbent for the selective removal of ligands from
fluids, said adsorbent comprising a polymeric anion exchange resin
containing particles of an oxygen-containing compound of iron dispersed
throughout the resin.
(Emphasis added.)
Defendant argues that “adsorbent” should be construed to mean the following:
a substance that has the ability to condense or hold molecules of other substances on its
surface. Defendant has taken that definition from a scientific dictionary. Plaintiff argues
that the term should be construed to mean the following: medium, including an anion
exchange resin, for removal of contaminants from fluids.

Plaintiff’s proposed

construction raises two issues.
First, plaintiff would include an anion exchange resin as an example in the
construction of “adsorbent”. Plaintiff cites a portion of the Patent’s specification that
notes that “[t]he adsorbent thus produced comprises a polymeric anion exchange resin.”
Patent at 3:6-7. The Court concludes, however, the definition of “adsorbent” should not
include the type of adsorbent produced here, as the remainder of Claim 1 more
appropriately describes and limits the claimed adsorbent. Accordingly, the Court rejects
plaintiff’s proposed inclusion of an example of an adsorbent.
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Second, plaintiff’s construction effectively defines adsorption merely as a method
for removal of a substance, without explaining how the removal occurs (thus
distinguishing adsorption from other methods of removal), as defendant’s construction
does (i.e., an adsorbent removes a substance by holding it on the surface of the
adsorbent). The Court agrees with defendant that plaintiff’s construction is therefore too
over-inclusive. Plaintiff argued at the hearing that adsorption is technically more
complex than as described by defendant’s construction, but it conceded that adsorption
does involve removal by holding the substance on the surface of the adsorbent. Plaintiff
also conceded that an adsorption is not limited to the removal of contaminants or to the
removal from fluids. For these reasons, the Court rejects plaintiff’s construction as too
broad.
Neither “adsorbent” nor “adsorption” is defined in the Patent; thus, it is
reasonable to consult a scientific dictionary to define the term, as defendant has done.
Nothing in the Patent suggests that “adsorbent” as used in the claims should have
anything other than its ordinary meaning in the art. Moreover, plaintiff has conceded
that defendant’s definition is essentially accurate, and, as defendant points out, this same
definition was cited by the applicant in the application process for the Patent.
Accordingly, the Court adopts defendant’s proposed construction, and the term
“adsorbent” is construed to mean a substance that has the ability to condense or hold
molecules of other substances on its surface.

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B.

“A Material That Exhibits Anion Exchange Behavior”

The parties dispute the proper construction of the term “a material that exhibits
anion exchange behavior,” found in Claims 1, 2, 7, and 10 of the Patent. In independent
Claim 1 (quoted above in Part III.A), this term is used to describe the starting material
that is used in the first reaction set forth in that claim. Dependent Claims 2, 7, and 10
use the term in the same sense and refer back to Claim 1. Defendant argues that the term
should be construed to mean the following: a material with fixed positively charged
functional groups and does not exhibit adsorbent behavior. Plaintiff argues for the
following construction: a material having fixed positively charged functional groups,
such as an anion exchange resin, including the Purolite A-500P anion exchange resin.
As a starting point, the parties agree that the construction of this term should
include the concept of having fixed positively charged functional groups, a construction
supported by language in the Patent’s specification. See Patent at 2:24-25 (“anion
exchangers have fixed positively charged functional groups”). The Court therefore
adopts that agreed language for its construction of this term.
Plaintiff would add to this construction the example of an anion exchange resin,
including referring by name to a particular product manufactured by defendant that is
mentioned as a possible starting material in the Patent’s description of the invention’s
preferred embodiments.

The Court agrees with defendant, however, that it is

inappropriate to include such examples in the definition of the term, and that naming
defendant’s own product would unfairly prejudice defendant by injecting a fact question
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(i.e., whether that product is in fact covered by the claim term) into the construction of
a claim term. Plaintiff has cited no authority supporting the inclusion of such an
example in the construction of a claim term; to the contrary, the caselaw stresses that a
claim is not necessarily limited to the preferred embodiments described in the
specification. See Phillips, 415 F.3d at 1323 (issue for construction is whether the
embodiments define the outer limits of the claim or are merely exemplary). Therefore,
the Court rejects plaintiff’s proposed addition to the agreed-upon language for the
construction of this term.
By its proposed construction, defendant would add the limitation that this starting
material not exhibit adsorbent behavior. Defendant does not point to anything in the
Patent’s specification that supports such a limitation. Instead, defendant argues that this
limitation is required as a matter of logic, based on the language of Claim 1. Defendant
notes that the starting material for the reactions in Claim 1 is “a material that exhibits
anion exchange behavior” (the term being construed here) and that the result after the
reactions is “an adsorbent capable of exchanging anions.” Defendant equates “capable
of exchanging anions” with “exhibit[ing] anion exchange behavior;” thus, according to
defendant the only difference between the starting and ending material, as stated in the
claim, is that the ending material is an adsorbent. Defendant therefore argues that the
starting material cannot be an adsorbent, because otherwise the starting and ending
materials would be the same, and the method claimed in Claim 1 would be pointless.
The Court rejects this argument by defendant. Claim 1 sets forth two reactions
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that must take place; thus, by the terms of the claim, the starting material is not identical
to the ending material. The fact that the claim does not also describe physically how the
starting and ending materials are different does not necessarily mean that the two
materials must have remained identical, as defendant would seem to argue, and
defendant has not cited any authority that would require a claim to include such a
description. It is also significant that in the preferred embodiment, as defendant
concedes, the starting material is in fact an adsorbent material. Defendant correctly
points out that it is possible for a claim to be properly construed to exclude the preferred
embodiment; but in this case, there is no basis to construe the claim to do so. Therefore,
the Court rejects the additional limitation proposed by defendant.
Accordingly, the Court construes the term “a material that exhibits anion
exchange behavior” to mean a material that has fixed positively charged functional
groups.

C.

“Dispersing” / “Dispersed”

The parties next dispute the proper construction of the term “dispersing”, found
in Claim 1 of the Patent, and the term “dispersed”, found in Claims 11 and 15. Claim
1 describes a step that involves “dispersing a salt of said metal throughout the
intermediate.” Dependent Claim 11 refers to the “dispersed salt of said metal.”
Independent Claim 15 refers to “particles of an oxygen-containing compound of iron
dispersed throughout the resin.” Defendant argues that the verb “dispersing” in Claim
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1 should be construed to mean distributing particles through another system. Plaintiff
argues that “dispersing” should mean loading, embedding, or encapsulating. Each party
would then construe the adjective “dispersed” in a manner consistent with its definition
of “dispersing”.
Defendant cites various dictionaries to support its construction. Those and other
dictionaries generally define “dispersing” to mean distributing or spreading. Defendant
would also add through another system to the definition, although defendant’s
dictionaries refer to distribution “throughout” or “in” another substance. Claims 1 and
15, however, provide the relevant preposition, requiring dispersion “throughout” the
intermediate or resin. Thus, the Court will not include a prepositional phrase in its
construction of “dispersing”, as the Court construes “throughout the intermediate” and
“throughout the resin” elsewhere in this opinion.
Plaintiff offers loading, embedding, and encapsulating as synonyms of
“dispersing”, based on the specification’s use of those terms in describing the invention’s
process. The specification does not make clear, however, that those terms are indeed
identical in meaning to “dispersing”; in fact, those words could describe various ways
to achieve the claimed dispersion. Moreover, the words offered by plaintiff are more
technical and less likely to be easily understood by the jury than the term being
construed. Plaintiff has not shown that “dispersing” and “dispersed” are used in the
Patent’s claims other than in their ordinary meaning. Therefore, the Court will construe
these terms to have their ordinary meaning, as set forth in the various dictionaries.
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Accordingly, the Court construes “dispersing” in the claims to mean distributing
or spreading. The Court construes “dispersed”, used as an adjective in the claims, to
mean distributed or spread.

D.

“Throughout the Intermediate” / “Throughout the Resin”

As noted above, Claim 1 describes a step that involves “dispersing a salt of said
metal throughout the intermediate,” while Claim 15 refers to “particles of an oxygencontaining compound of iron dispersed throughout the resin.” Defendant would construe
these two quoted terms by simply replacing the word “throughout” with the words in
every part of. Plaintiff would construe this term from Claim 1 to mean loading,
embedding, or encapsulating a salt of the metal within the intermediate; and would
construe the term from Claim 15 to mean particles of an oxygen-containing compound
of iron, such as hydrated iron oxide, loaded embedded, or encapsulated within the resin.
First, plaintiff’s proposed constructions incorporate its proposed constructions for
“dispersing” and “dispersed”. The Court has already construed those words otherwise.
See supra Part III.C.
Second, in Claim 15, plaintiff proposes including the example of hydrated iron
oxide. Just as it did for other terms construed above, the Court concludes that including
a mere example in the construction would be inappropriate, and it therefore rejects this
portion of plaintiff’s proposed construction.
Thus, the Court is left to construe the term “throughout” in these claims, for
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which defendant would substitute in every part of, and for which plaintiff would
substitute the word within. The parties’ dispute goes beyond that semantic disagreement,
however.

Plaintiff appears to take the position that the terms “throughout the

intermediate” and “throughout the resin” would encompass a situation in which only one
or two particles enter the interior, or go beyond the periphery, of the intermediate or
resin (i.e., within the intermediate or resin). On the other hand, defendant argues that
these terms (along with other terms construed below) require that the particles (the salt
of the metal) be distributed to every possible exchange site in every bead of the
intermediate or resin (i.e., in every part of the intermediate or resin), thereby achieving
saturation with a stoichiometric amount of the salt (i.e., enough to cover all of the
possible exchange sites).
The Court begins with the ordinary meaning of the word “throughout”.
Dictionaries generally agree that the word, used as a preposition as it is here, means all
the way through, or through the whole of, or in or to every part of, or everywhere in.
Defendant’s proposed use of in every part of is therefore consistent with the ordinary
meaning of “throughout”. Within, however, which plaintiff proposes, has a different
meaning—that word is generally understood to mean inside of, or contained in.
Plaintiff has not shown that “throughout”, as used in the claims, should mean
within or have some other meaning different from the ordinary meaning of the word. For
instance, plaintiff cites to various places where the Patent’s specification refers to
“dispers[ion] . . . within” a substance, but the specification does not suggest in any place
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that “dispersion within” means the same as “dispersion throughout.” In this case, it is
indeed significant that the claims do not refer to “dispersion within,” as the “throughout”
language was added to Claim 15 after a rejection by the examiner, specifically to
overcome anticipation by prior art (the Salem patent).
Plaintiff argues that this prosecution history—adding the “throughout” language
to overcome Salem—supports its use of within to construe “throughout”. Claim 15
originally referred to “a polymeric anion exchange resin containing dispersed particles
of an oxygen-containing compound of iron.” The only evidence submitted concerning
the examiner’s rejection of that claim is the following statement by the examiner:
Claim 15 is rejected under 35 U.S.C. 102(b) as being anticipated by
Salem. USP 5397477 to Salem states:
The effluent stream from Mixed Bed D contains a concentration in
the range of about 10 ppb by weight of metal oxide particulate at
5 service days, increasing to almost 40 ppb at 30 service days. This
increase is postulated to demonstrate that, at least initially, the
mixed bed containing conventional cation exchange resin and the
conventional anion exchange resin are expected to adsorb iron
oxide particles. However, the metal oxide particulate concentration
of the Mixed Bed D effluent stream is expected to increase
significantly over time. This hypothetical increase is consistent
with a well-known tendency of conventional mixed beds to become
saturated with an equilibrium loading of adsorbed metal oxide
particulate on the surface of the resin particles. Generally
speaking, after the surface loading equilibrium is achieved, very
little additional metal oxide particulate removal takes place and the
ion exchange resins of such saturated conventional beds are usually
relegated to disposal.
Accordingly, Salem teaches that anion exchange resins containing
dispersed particles of iron oxide were known.
After this rejection of Claim 15, a summary of an interview between the examiner and
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a representative for the applicant states as follows:
Per claim 15, Applicant argued Salem does not describe a polymeric anion
exchange resin containing “dispersed particles of an oxygen-containing
compound of iron.” This argument alone was not persuasive, but the
examiner acknowledged that Salem does not describe particles of iron
dispersed “throughout” the adsorbent. The examiner proposed changing
“dispersed particles . . . of iron” to read “particles . . . of iron dispered [sic]
throughout the resin.” With this change, the examiner agreed to withdraw
the rejection of claim 15 over Salem.
In subsequently allowing Claim 15 as revised in accordance with the examiner’s
suggestion, the examiner stated that “Salem does not describe dispersing a salt of a metal
‘throughout’ the adsorbent.”
Plaintiff points to the language from Salem, quoted by the examiner in his
rejection, relating to saturation on the surface of the resin particles. Based on that
language, plaintiff argues that penetration beyond the surface was required to distinguish
and overcome Salem, and that the “throughout” phrase was therefore added to Claim 15
to indicate that the claim required only the dispersion of the salt within, or beyond the
surface of, the resin. As defendant points out, however, the portion of Salem quoted by
the examiner does suggest that some metal oxide particulate—in however small an
amount—can penetrate the surface to the interior of the resin. The only conclusions that
may reasonably be drawn from the comments of the examiner is that because “resins
containing dispersed particles . . . were known,” Claim 15 had to go beyond a resin that
contains dispersed particles to overcome Salem, and that adding “throughout the resin”
to refer to the dispersion solves the problem. Reading more into the examiner’s
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statements would require pure speculation. This history does not suggest in any way that
“throughout” was intended to have anything other than its ordinary meaning.3
Plaintiff has not submitted any other evidence supporting its construction of
“throughout”. Accordingly, the Court rejects plaintiff’s proposed construction, including
its argument that the term encompasses penetration into the interior by only one or two
particles, in favor of construing “throughout” consistent with its ordinary meaning (i.e.,
through the whole of, in every part of).
The Court next turns to defendant’s larger argument that the Patent’s claims
require that a stoichiometric amount of metal compound be used, so that every possible
exchange site within each bead of the intermediate or resin is reached, and the
intermediate or resin has thus become fully saturated. Defendant seeks to add that
limitation to the claims by way of its proposed construction of “throughout” and the
other claim terms discussed below, see infra Parts III.E, III.F. With respect to this term
specifically, defendant appears prepared to argue at trial that dispersion “in every part
of” the intermediate or resin means reaching every exchange site within every resin bead.
The Court rejects this larger argument, as it concludes that the evidence does not support
importing such a significant limitation into the claims.
Defendant cites to two places where the Patent’s specification refers to “uniform”

This conclusion also takes care of plaintiff’s argument, made at the hearing, that
the term “dispersed” is sufficient to account for any type of quantitative requirement, as
the examiner clearly decided that something beyond mere dispersion was required for
allowance of Claim 15.
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dispersion and a “uniform” color achieved when the process is complete. Uniformity
does not necessarily mean full saturation, however, and those descriptions refer only to
preferred embodiments at any rate. Defendant also argues that the actual amounts cited
in the specification’s examples show that a stoichiometric amount was used. The Court
cannot make that conclusion from the face of the Patent, however, and defendant has
provided no evidence from one skilled in the art to support that argument. Furthermore,
the use of a stoichiometric amount in the preferred embodiments would not mean that
the claims required the same. Therefore, the Court does not find the specification to be
helpful on this question, as it does not show that the claims (as opposed to some
embodiments) require a stoichiometric amount.
Defendant also attempts to rely on the prosecution history relating to Salem. In
particular, defendant cites testimony by Dr. SenGupta concerning his understanding of
the Salem patent. That testimony is not especially helpful, as Dr. SenGupta did not
provide any evidence of the examiner’s reasoning in rejecting the original Claim 15 (in
fact, Dr. SenGupta testified that he disagreed with the examiner’s decision). Moreover,
in distinguishing Salem from his own invention, Dr. SenGupta opined that Salem did not
describe a method placing a “significant amount” of particles inside the exchanger going
all the way to the interior. At most, that testimony suggests that his own invention is a
method for dispersing a “significant amount” within the resin—thus, the testimony falls
short of requiring a stoichiometric amount or full saturation. Dr. SenGupta’s testimony
that the capacity of the Purolite A-500P resin used in the specification is publicly
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available is similarly unhelpful, as such testimony does not bear on whether the Patent’s
claims require a certain capacity.4
The other extrinsic evidence cited by defendant also fails to support the proposed
limitation. For instance, Dr. SenGupta’s use of “evenly” and his reference to substantial
uniformity in another patent application does not suggest that “throughout” means the
use of a stoichiometric amount. Similarly, the fact that employees of plaintiff’s
predecessor-in-interest (to whom Dr. SenGupta licensed the technology) used 105% of
the stoichiometric amount in one example in a patent application does not mean that
dispersion “thoughout” required a stoichiometric amount in all cases in that patent (let
alone the present Patent). Finally, defendant notes that its license and manufacturing
agreement with plaintiff’s predecessor required use of “sufficient permanganate to
saturate all of the available anion exchange sites on the resin.” Again, however, the fact
that one example of the technology uses a stoichiometric amount does not mean that the
language of the claims requires that amount and is not broader.
In summary, defendant has not provided evidence, intrinsic or extrinsic, that
clearly supports adding this limitation that has no foundation in the language of the

At the hearing, both parties cited to certain pages of Dr. SenGupta’s deposition
in addressing this question of whether a stoichiometric amount is required. Because the
parties failed to submit those pages of the deposition to the Court, however, the Court
has not considered any such testimony.
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claims themselves.5 With respect to the specific term “throughout”, even if the term is
construed to mean in every part of, as defendant proposes, that construction does not
necessarily require reaching every exchange site within every bead of resin, as “part”
might reasonably and ordinarily refer to an area broader than a single exchange site. In
that sense, it is significant that the claims do not require dispersion “throughout” each
resin bead, but merely require dispersion “throughout the intermediate” or “throughout
the resin.” Thus, the mere use of “throughout” here, in its ordinary sense, does not
require the use of a stoichiometric amount, as defendant proposes, and the Court
therefore rejects any such limitation in construing the terms of the claims.
For these reasons, the Court will construe “throughout” consistent with its
ordinary, dictionary definition, while also foreclosing the parties’ broader arguments
concerning the scope of the Patent’s claims that are inconsistent with that definition and
do not find support in the Patent or elsewhere. See O2 Micro Int’l, 521 F.3d at 1360-62
(in construing patent terms, the court must resolve legal issues regarding the scope of the
claims, as the jury cannot be allowed to consider arguments concerning such issues).
Accordingly, the Court construes the term “throughout” as follows: Dispersion
“throughout the intermediate” and “throughout the resin” in Claims 1 and 15
respectively means all the way through the intermediate or resin, or through the whole

In light of this conclusion, the Court need not address plaintiff’s argument, based
on the doctrine of claim differentiation, that defendant’s interpretation of Claim 1 would
render dependent Claim 6 superfluous.
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of it, or in or to every part of it, or everywhere in it. Dispersion “throughout” the
intermediate or resin is not achieved merely by having some particles reach the interior
or go beyond the periphery of the intermediate or resin. On the other hand, dispersion
“throughout” the intermediate or resin does not require that a stoichiometric amount
was used or that every possible exchange site was reached.

E.

“Intermediate”

The parties dispute the proper construction of term “intermediate”, which is found
in Claims 1, 2, and 5 of the Patent. Defendant has proposed the following construction:
the material that exhibits anion exchange behavior that is reacted with the anionic
oxidant. The reaction that creates the “intermediate” occurs by reacting at least a
stoichiometric equivalent amount of anionic oxidant to anion exchange sites in the
material that exhibits anion exchange behavior. Plaintiff argues that the terms should
be construed to mean the substance formed as the result of a reaction between a material
that exhibits anion exchange behavior and an anionic oxidant.
Each party defines this term by simply referring to the reaction, as described in
Claim 1, that produces the “intermediate” referenced in Claims 1, 2, and 5. Defendant
would also add the limitation that the reaction involves a stoichiometric amount of the
oxidant. For the reasons set forth above with respect to the construction of “throughout”,
see supra Part III.D, the Court rejects the defendant’s proposed limitation.
The Court also disagrees with the parties’ method of defining this term by
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reference to the reaction that produces it. The language of Claim 1 adequately defines
the reaction that must take place; thus, defining “intermediate” to include that reaction
is unnecessary. The Court further believes that defining the word “intermediate”, which
may not be readily understood by a layperson, is appropriate. In the words of one
dictionary, the word “intermediate” in this context simply means a substance “formed
as an intermediate step between the starting material and the final product.” See
Webster’s Third New Int’l Dictionary at 1180 (1993). The parties do not dispute that the
word is used in that way in these claims.
Accordingly, the Court construes “intermediate” to mean a substance formed as
an intermediate step between the starting material and the final product.

F.

“A Polymeric Anion Exhange Resin”

Finally, the parties dispute the proper construction of the term “a polymeric anion
exchange resin,” found in Claims 7 and 15 of the Patent. Defendant argues that the term
means all of the polymeric beads that exhibit anion exchange behavior. Plaintiff argues
that the term means a polymeric material that exhibits anion exchange behavior, such
as the Purolite A-500P anion exchange resin.
Thus, the parties seem to agree that the term means a polymeric material that
exhibits anion exchange behavior.6 Plaintiff would also add the example of the Purolite

Although the word “polymeric” would not seem to be a term readily understood

6

(continued...)
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A-500P anion exchange resin, but the Court again concludes that the inclusion of an
example—especially one naming a specific product—is not appropriate here.
Defendant’s addition would essentially define “a polymeric resin” to mean all of
the polymeric beads in the resin. Defendant characterizes this dispute as concerning the
proper construction of the word “resin” (although neither party has offered a definition
of “resin”), and defendant apparently seeks to foreclose a later argument by plaintiff that
the term “resin” here can refer to a single resin bead.
Plaintiff has joined this battle, arguing that the Patent’s specification supports the
argument that “resin” can refer to a single bead, but those citations are unavailing.
Plaintiff first cites the following language from the specification’s summary of the
invention:
The material that exhibits anion exchange behavior is preferably a
polymeric anion exchange resin, and may comprise weak base organic ion
exchange beads containing primary, secondary or tertiary amine groups or
a mixture thereof.
Patent at 2:61-65. Plaintiff argues that this language indicates that the resin may
comprise “beads” (plural) and thus also may comprise only a single bead. The Court
agrees with defendant, however, that the use of “may” more reasonably indicates not that
a single bead may also be used, but that other types of beads (plural) may also be used.

6

(...continued)

by a layperson, the parties agree that that requirement is not at issue in the case and that
the word therefore need not be defined. Accordingly, the Court declines to provide a
definition of the word.
23

Plaintiff also notes that Figure 3 in the Patent shows only a single bead while the
description of that figure refers to “resin” and not to a resin bead. See Patent at 3:59-61.
The description does not state that the figure shows resin, however, but states only that
the diagram illustrates why a certain resin does not have a particular trait. Thus, this
reference does not support plaintiff’s argument. Finally, plaintiff cites the specification’s
list of alternative substances that may be used instead of a certain type of resin, which
list includes references to certain types of “resin beads” as well as fibrous materials. See
Patent at 9:66-10:12. Plaintiff argues that because fiber may be used, “resin” need not
comprise multiple beads. Fiber, however, is listed as a non-resin alternative, and the
cited excerpt does not support a construction of “resin” as possibly comprising only a
single bead.
Thus, the Patent itself does not support plaintiff’s argument. Nor has plaintiff
offered any additional evidence on the meaning of “resin” or that supports its
construction of the scope of the claims in this regard.
In fact, all of the relevant evidence suggests that “resin” is understood to refer to
a collection of multiple beads. The specification refers to “beds” of resin, which implies
a relatively large volume of resin that must consist of more than one of the microscopic
beads. See, e.g., Patent at 3:15-25, 4:66-5:1. The specification also refers to “resin
beads,” which suggests that resin is a collection of multiple beads. See, e.g., id. at 6:5864, 9:66-10:12. Most significantly, the specification includes the following statement:
Anion exchange resins from other manufacturers may of course be
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used. Particles sizes of the anion exchange resins are preferably in the
range from 300 μm [micrometers, i.e., millionths of a meter] to 1000 μm.
Id. at 5:13-15. This language also indicates that resins are comprised of multiple
microscopic particles or beads. Defendant also notes that two examples of prior art cited
in the Patent refer to beds of resin made of beads. See Arthur A. Collins, Inc. v. Northern
Telecom Ltd., 216 F.3d 1042, 1044-45 (Fed. Cir. 2000) (prior art may assist in
ascertaining the meaning of a term to one skilled in the art).7 In addition, the only expert
evidence offered by the parties consists of a declaration submitted by defendant, in
which a resin expert states that to one skilled in the art, “resin” as used in these claims
refers to many resin beads.8
Therefore, the Court agrees with defendant that “resin” here refers to a substance

Defendant notes that in response to a request for admission, plaintiff denied that
“[t]he adsorbent of claim 15 is a single (i.e., one) anion exchange resin bead.” Plaintiff
could have denied that request, however, on the basis that the adsorbent is not
necessarily a single bead, which would not foreclose the possibility that the adsorbent
could be a single bead (as plaintiff argues here). Whether or not plaintiff should have
explained its denial further, see Fed. R. Civ. P. 36(a)(4) (denial must fairly respond to
the substance of the matter), the Court does not agree that plaintiff is somehow estopped
from taking the position it has here.
7

Plaintiff objects to defendant’s submission of this expert declaration. The Court
agrees that defendant violated the Court’s scheduling order by failing to disclose this
expert before submitting his declaration. Plaintiff has not shown any prejudice from that
violation, however, as plaintiff did not subsequently seek leave to depose the expert or
to supplement its own submission with evidence from an expert. Nor did plaintiff
dispute the expert’s opinion on this issue at the hearing. Thus, the Court has considered
the declaration. The Court notes, however, that even if the declaration were excluded,
the Court would construe this term in the same way, based on the other evidence cited
above.
8

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containing multiple beads, and it rejects plaintiff’s argument that the scope of the claims
allows for “resin” to refer to a single bead. Thus, the Court resolves the parties’ dispute
concerning the meaning of “resin”, as characterized by defendant. That decision,
however, does not appear to resolve the propriety of the construction proposed by
defendant, who would construe “a polymeric resin” to mean “all of the polymeric beads”
that exhibit the particular behavior. Defendant’s purpose in proposing this construction
is unclear. If defendant intended merely to counter plaintiff’s single-bead argument, its
proposed construction is unnecessary, as the Court can simply note that “resin” refers to
a substance comprised of multiple beads. If defendant intended by this construction to
further its proposed limitation that the dispersion must involve a stoichiometric amount
reaching every exchange site, that construction is rejected for the same reasons set forth
above in the discussion of “throughout”. See supra Part III.D. Defendant has not shown
that “a resin” as used within this term necessarily means to all of the beads, and the
Court sees no reason to include such language in its construction.9

In a summary of argument submitted to the Court at the hearing, defendant
argues that if “resin” could mean something less than all of the beads, one could not
determine how many beads are required for infringement, thereby rendering the claim
indefinite. Defendant has not explained, however, how the claims’ references to “resin”
generally are fatally indefinite, or how this issue of the quantity of affected beads relates
to a dispute between the parties regarding claim scope, other than with respect to
requirement of a stoichiometric amount, addressed above. With respect to this latter
dispute, the term “throughout” defines the scope of the claim, and defendant has not
provided any argument why that term is fatally indefinite. Thus, the Court rejects any
argument that its constructions should be affected by a consideration of a possibility of
indefiniteness.
9

26

Accordingly, the Court construes the term “a polymeric anion exchange resin”
to mean a polymeric material comprising multiple beads that exhibits anion exchange
behavior.

IT IS THEREFORE ORDERED BY THE COURT THAT certain terms in the
patent at issue in this action are construed as set forth herein.
IT IS SO ORDERED.
Dated this 22nd day of July, 2011, in Kansas City, Kansas.
s/ John W. Lungstrum
John W. Lungstrum
United States District Judge

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