Paducah River Painting, Inc v. McNational, Inc et al

Filing 94

CLAIMS CONSTRUCTION MEMORANDUM OPINION & ORDER by Senior Judge Thomas B. Russell on 12/18/2013;cc:counsel (KJA)

UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF KENTUCKY
PADUCAH DIVISION
CIVIL ACTION NO. 5:11-CV-00135-TBR
PADUCAH RIVER PAINTING, INC.

Plaintiff

v.
McNATIONAL, INC., et al.

Defendants

CLAIMS CONSTRUCTION MEMORANDUM OPINION AND ORDER
This matter is before the Court upon the parties’ respective Claim Construction
Briefs. (Docket Nos. 79; 80.) The Court held a Markman hearing regarding the
disputed claim terms on April 30, 2012. (See Docket No. 83.) That hearing addressed
the sundry of disputed claim terms submitted by the parties in their Joint Claim
Construction Statement. (See Docket No. 78.) The parties have responded to one
another’s Claim Construction Briefs, (Docket Nos. 81; 82), and also have submitted
post-Markman Hearing Briefs in support of their respective constructions of the
disputed terms, (Docket Nos. 86; 87). These matters now are fully briefed and ripe for
adjudication. Upon considering the parties’ respective Briefs, the evidence of record,
and the arguments and testimony presented at the Markman hearing, the Court construes
the disputed claim terms as set forth herein. This Opinion does not address the merits of
the underlying patent infringement claim.

Page 1 of 35

STANDARD
The interpretation and construction of a patent claim are questions of law to be
answered by the Court. Markman v. Westview Instruments, Inc., 517 U.S. 370, 372
(1996). “It is a bedrock principle of patent law that the claims of a patent define the
invention to which the patentee is entitled the right to exclude.” Phillips v. AWH Corp.,
415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal quotation marks omitted). The
terms of a patent claim are to be given the ordinary and customary meaning from the
perspective of a person of ordinary skill in the art at the time the patent is filed.
Chamberlain Grp., Inc. v. Lear Corp., 516 F.3d 1331, 1335 (Fed. Cir. 2008). “[T]he
person of ordinary skill in the art is deemed to read the claim term not only in the
context of the particular claim in which the disputed term appears, but in the context of
the entire patent, including the specification.” Phillips, 415 F.3d at 1313.
When construing claim terms, the Federal Circuit emphasizes that courts should
look principally to the “intrinsic record,” which consists of the claims themselves, the
patent specification, and the prosecution history. Id. at 1313-17. First, “the claims
themselves provide substantial guidance as to the meaning of particular claim terms,”
id. at 1314 (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996);
ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003)), and “the context
in which term is used in the asserted claim can be highly instructive,” id. Second,
because they “do not stand alone” but instead “are part of a fully integrated written
instrument,” the “claims must be read in view of the specification, of which they are a
part.” Id. at 1315 (internal quotation marks omitted). On this point, the Federal Circuit
advises that: “[T]he specification is always highly relevant to the claim construction
Page 2 of 35

analysis. Usually, it is dispositive; it is the single best guide to the meaning of a
disputed term.” Id. (internal quotation marks omitted) (quoting Vitronics, 90 F.3d at
1582).

When reviewing the specification, however, courts must avoid reading

limitations from the specification into the claims. Id. at 1323. To avoid importing
limitations, a court must consider the purposes of the specification, which are to teach
and enable those of skill in the art to make and use the invention and to provide the best
way for doing so. Id. Third, “a court should also consider the patent’s prosecution
history, if it is in evidence.” Id. at 1317 (internal quotation marks omitted). The
prosecution history consists of the complete record of the proceedings before the U.S.
Patent and Trademark Office (PTO) and includes the prior art cited during the
examination of the patent. Id. “Like the specification, the prosecution history provides
evidence of how the PTO and the inventor understood the patent . . . [and also] like the
specification, the prosecution history was created by the patentee in attempting to
explain and obtain the patent.” Id. Typically, repeated words or phrases in the patent
are construed to have the same meaning. Id. at 1314.
In addition to intrinsic evidence, courts may look to extrinsic evidence, which
“consists of all evidence external to the patent and prosecution history, including expert
and inventor testimony, dictionaries, and learned treatises.” Id. (internal quotation
marks omitted).

“However, while extrinsic evidence can shed useful light on the

relevant art . . . it is less significant than the intrinsic record in determining the legally
operative meaning of claim language.” Id. (internal quotation marks omitted) (quoting
C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004)).

Page 3 of 35

“Ultimately, the interpretation to be given a term can only be determined and
confirmed with a full understanding of what the inventors actually invented and
intended to envelop with the claim.” Renishaw PLC v. Marposs Societa’ per Azioni,
158 F.3d 1243, 1250 (Fed. Cir. 1998) (citing Markman, 517 U.S. at 389).

“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.
Therefore, “[a] claim construction is persuasive, not because it follows a certain rule,
but because it defines terms in the context of the whole patent.” Id.
DISCUSSION
Plaintiff Paducah River Painting, Inc., filed this action alleging patent
infringement against Defendants McNational, Inc.; McGinnis, Inc.; and National
Maintenance & Repair of Kentucky, Inc. Plaintiff alleges that Defendants are infringing
upon U.S. Patent No. 7,837,410 (hereinafter the ’410 Patent), which outlines a system
for refurbishing river barges. (See Docket Nos. 1; 1-1.) River barges are flat-bottomed
boats used to transport goods and other cargo on inland waterways. Over time, their
painted hulls begin to corrode and must be refurbished in order to extend the life of the
barge and improve its performance. Refurbishment, generally speaking, requires that
the rust, debris, corrosion, etc., be removed from the barge’s hull, which is then
repainted or recoated before the barge is returned to service. Prior to the ’410 Patent,
one method by which refurbishment was accomplished was by removing the barge from
the river, dry-docking it, blasting the hull with some abrasive media (i.e., sandblasting),
repainting the hull, and then returning the barge to the river.

Page 4 of 35

The parties presently dispute the proper construction of twenty some-odd claim
terms, phrases, or clauses with respect to the ’410 Patent.

In their Joint Claim

Construction Statement, the parties have listed, in table format, each of the disputed
claim terms along with their respective proposed construction of that term. Claim
construction has two practical implications. First, construing the claims enables a fact
finder to determine whether a patent may be invalid for failing to meet requirements of
patentability. See Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351
(Fed. Cir. 2001). Second, construing the claims allows for the determination whether an
alleged infringer has infringed on a patent by doing that which is covered by any of the
patent’s claims. See id. In the following discussion, the Court will address each of the
disputed terms in the order they are presented in the parties’ Joint Claim Construction
Statement. The Court will begin by reciting the parties’ proposed construction of each
disputed claim term. Then, employing the above principles of claim construction and
considering the parties’ proposals, the Court will set forth its construction of the
disputed term.
A.

“transport system”

The term “transport system” appears in Claims 1, 2, 3, 5, 6, 7, and 18. Claims 1
and 18 are independent claims, whereas Claims 2, 3, 5, 6, and 7 depend on Claim 1.1
The parties propose the following competing constructions of the term “transport
system”:
1

“Independent” claims stand alone, whereas “dependent” claims expressly refer to an earlier claim,
such as “The method of claim 1 further comprising . . . .” Dependent claims incorporate all of the
limitations of the claim from which they depend and add further limitations specific to the dependent
claim. Thus, independent claims have the broadest coverage while dependent claims necessarily are
narrower than the claim from they depend. See generally FED. JUD. CTR., ANATOMY OF A PATENT CASE
97 (2d ed. 2012).

Page 5 of 35

Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

a transport system 2 that conveys the barge a frame with wheels that is connected to
from one place or location to another, as and carried by another frame with wheels
defined by the terms “securely supports
the barge” and “up an embankment to an
on-land position”
Claim 1 reads, in relevant part:
A method of refurbishing a barge . . . the method comprising:
submerging a transport system into a waterway;
moving the barge over the submerged transport system;
moving the transport system in contact with the barge such
that the transport system securely supports the barge;
moving the transport system and barge from the waterway,
up an embankment to an on-land position and away from
the waterway;
(Docket No. 1-1, at 27 (emphasis added).) For purposes of this disputed term, the
limitations expressed in the body of Claim 18 are substantially similar to those in
Claim 1. (See Docket No. 1-1, at 28.) The language of Claims 1 and 18 requires that
the transport system be submerged, moved in contact with the barge such that it
securely supports the barge, and then moved with the barge from the waterway up an
embankment to an on-land position.

The specification does not expressly define

“transport system.” The specification does, however, describe one embodiment as
having a “first transport system” comprising a dolly having a “frame[] connected to
casters or wheels,” or comprising “a rectangular base assembly connected to wheels.”
(Docket No. 1-1, at 22.)
2

In their briefing, Plaintiff proposed the following construction for “transport system”: “a group of
interrelated elements that conveys the barge from one place or location to another, as defined by the terms
‘securely supports the barge’ and ‘up an embankment to an on-land position.’” (See, e.g., Docket No. 78,
at 1-2.) During the Markman hearing, Plaintiff stated that it wished to abandon the language “group of
interrelated elements” and in its place merely use the words “transport system.” (Docket No. 83, at 35.)

Page 6 of 35

Plaintiff argues that “transport system” is a simple and unambiguous term that
should be construed using its ordinary meaning. Defendants disagree, pointing to the
patent specification to argue that “[t]he first transport system must necessarily be ‘a
frame with wheels that is connected to and carried by another frame with wheels.’”
(Docket No. 80, at 10.) Plaintiff insists that the Defendants’ proposed construction “is a
clear—indeed classic—attempt to limit the scope of the patent claim to the specific
embodiment disclosed in the patent specification by importing limitations from the
patent specification into the patent claim.” (Docket No. 79, at 9-10.)
In a recent decision, Arlington Industries, Inc. v. Bridgeport Fittings, Inc., the
Federal Circuit reaffirmed the notion that “even where a patent describes only a single
embodiment, claims will not be read restrictively unless the patentee has demonstrated a
clear intention to limit the claim scope using words of expressions of manifest exclusion
or restriction.” 632 F.3d 1246, 1254 (Fed. Cir. 2011) (quoting Martek Biosci. Corp. v.
Nutrinova, Inc., 579 F.3d 1363 1381 (Fed. Cir. 2009); Liebel-Flarsheim Co. v. Medrad,
Inc., 358 F.3d 898, 906 (Fed. Cir. 2004)); accord Phillips, 415 F.3d at 1323 (“[W]e have
expressly rejected the contention that if a patent describes only a single embodiment,
the claims of the patent must be construed as being limited to that embodiment.”). The
’410 Patent does not show a clear intent to limit the claim to an embodiment where
“transport system” means “a frame with wheels that is connected by another frame with
wheels,” as Defendants urge.

Therefore, to adopt the Defendants’ proposed

construction would impermissibly limit the scope of the patent claims to the preferred
embodiment. Instead, the Court agrees with Plaintiff that “transport system” does not
mean anything other than “a system that transports something from one point to

Page 7 of 35

another.” Furthermore, in light of the other limitations expressed in the body of Claim
1, it is clear that the transport system must be “submerged,” must “securely support[]
the barge,” and must be moved with the barge “from the waterway, up an embankment
to an on-land position.” (See Docket No. 1-1, at 27.) These limitations provide the
necessary scope for the proper construction of the term “transport system.”
Therefore, in light of the intrinsic record, the Court finds that the ordinary and
customary meaning of “transport system,” as understood in the context of the claimed
invention by one skilled in the art at the time of the invention, is “a transport system that
conveys the barge from one place to another” as limited by the terms and phrases in
Claim 1, column 14, lines 32 – 38, and in Claim 18, column 16, lines 47 – 53.
B.

“another transport system”

The term “another transport system” appears in Claims 1, 2, 3, 5, 6, and 7.3 The
parties propose the following competing constructions of the term “another transport
system”:
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

a transport system that conveys the barge a frame with wheels configured to move
from one place or location to another, as into a refurbishing system
defined by the terms “securely supports
the barge” and “up an embankment to an
on-land position”
3

The parties’ Joint Claim Construction Statement identifies the term “another transport system” as
appearing in Claims 1, 2, 3, 5, 6, and 7. (Docket No. 78, at 2.) The language “another transport system”
appears in independent Claim 1. Claims 2, 3, 5, 6, and 7 depend upon Claim 1, but do not themselves
contain the exact language “another transport system.” (Claims 6 and 7 do contain the language “other
transport system,” however.) Claims 4 and 8 also depend upon Claim 1, and Claim 8 contains the
language “other transport system.” (See Docket No. 1-1, at 27-28.) Thus, it is not clear to the Court why
the parties did not also identify these claims. Many of the other disputed claim terms have similar issues
with the claim numbers that the parties identify as containing a particular disputed term. Regardless,
throughout this Opinion, the Court will use the claim numbers specifically identified by the parties in
their Joint Claim Construction Statement.

Page 8 of 35

The Court’s construction of “transport system” supra Part A would appear to dispose of
the dispute over the instant term “another transport system.” The only difference in the
two terms is the addition of the word “another.” The term “another” has no specific
definition in the ’410 Patent and thus is interpreted using its plain and ordinary
meaning, which is simply a transport system other than the transport system first
mentioned in Claim 1. Thus, the Court concludes that no further construction of this
term is necessary.
C.

“transferring the barge from the transport system to another
transport system”

The term “transferring the barge from the transport system to another transport
system” appears in Claims 1, 2, 3, 5, 6, and 7. The parties propose the following
competing constructions of this term:
Plaintiff’s Proposed Construction
[The term need not be construed.]

Defendants’ Proposed Construction
at the on-land position, transferring the
barge from the transport system to
another transport system 4

Defendants argue that because the preferred embodiment contemplates that the barge is
transferred at an on-land position, the meaning of this term should be informed by the
specification to require that the “transferring” occur at the on-land position. (Docket
No. 80, at 16.) Thus, Defendants urge that the proper construction should include the

4

Defendants’ original proposed construction of this term was “at the on-land position, raising the
barge off the transport system and lowering it onto another transport system.” (Docket No. 78, at 2.)
Defendants subsequently abandoned this proposed construction in favor of the construction, “at the onland position, transferring the barge from the transport system to another transport system.” (Docket No.
80, at 16 & n.3.)

Page 9 of 35

added language “at the on-land position.” The Court disagrees and again declines to
import this limitation from the patent specification into Claim 1. Accordingly, the Court
concludes that no further construction of this term is necessary.
D.

“securely supports the barge”

The term “securely supports the barge” appears in Claims 1, 2, 3, 5, 6, 7, and 18.
The parties propose the following competing constructions of the term “securely
supports the barge”:
Plaintiff’s Proposed Construction
the barge rests on the transport system

Defendants’ Proposed Construction
the barge is securely connected to the
frame which carries it and stabilizes the
barge in a level orientation

As noted supra Part A, the term “securely supports the barge” appears in independent
Claims 1 and 18 in the limiting language “moving the transport system in contact with
the barge such that the transport system securely supports the barge.” (Docket No. 1-1,
at 27-28.)
In this instance, neither party’s proposed construction is particularly compelling.
The Defendants’ proposed construction seeks to import a number of limitations from the
preferred embodiment into the patent claims, such as by defining “securely supports” to
mean “securely connected,” by limiting the transport system to a “frame,” and by
requiring that the transport system carry and stabilize “the barge in a level orientation.”
On the other hand, Plaintiff’s proposed construction seeks to broaden the scope of the
claim language by effectively rendering the modifying adverb “securely” superfluous.
See Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (instructing that
claims should be “interpreted with an eye toward giving effect to all terms in the

Page 10 of 35

claim”).

The parties’ respective experts and their reports are also of little help.

Ultimately though, the Court finds that the term “securely supports the barge” is
relatively clear and unambiguous as written. Webster’s Dictionary defines “securely” as
“in a secure manner.”

WEBSTER’S THIRD INTERNATIONAL DICTIONARY (2013)

[hereinafter WEBSTER’S], http://unabridged.merriam-webster.com/unabridged/securely.
The Court is of the opinion that the word “securely” in the term “securely supports the
barge” can be readily understood by a jury to have its plain, ordinary meaning of
“supporting the barge in a secure manner.” As such, the Court declines to adopt either
party’s proposed construction and instead finds that no further construction of this term
is necessary.
E.

“up an embankment to an on-land position”

The term “up an embankment to an on-land position” appears in Claims 1, 2, 3,
5, 6, 7, 17, and 18. The parties propose the following competing constructions of the
term “up an embankment to an on-land position”:
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

upwardly and away from the waterway to across the embankment onto the shelf,
a location above the bank of the waterway berth, or other flat portion of land inland
from the embankment
The crux of the dispute over this claim term appears to be whether “an embankment”
and “an on-land position” are mutually exclusive or, instead, whether the embankment
itself can be considered an on-land position.

In essence, Plaintiff argues that the

embankment is an on-land position because the embankment is, in fact, on land and not
in the waterway. Defendants, on the other hand, point to the preferred embodiment to

Page 11 of 35

argue that the barge must move to some location past the embankment (such as onto the
shelf or berth) in order to reach “an on-land position.”
In this instance, the Court finds that the prosecution history of the ’410 Patent
makes clear that “on-land position” merely means a position on land and out of the
waterway. In its back-and-forth with the PTO, Plaintiff distinguished the ’410 Patent
from prior art in which a dry dock is positioned in the waterway, stating that the ’410
Patent teaches “a method for refurbishing the barge or a system for refurbishing the
barge that moves the barge out and away from the waterway and to a position on land.”
(Docket No. 80-2, at 109.) Plaintiff thus made clear that “on-land position” was meant
to refer to a position that “is located out and away from the waterway.” (Docket No. 802, at 109.) In view of the intrinsic evidence, the Court is left with the certain impression
that this claim language simply refers to a position “out of and away from the
waterway.” This position may be on the embankment itself, or it may be farther inland
on the shelf or berth. The Defendants’ proposed construction again seeks to import
unnecessary limitations into the claim language. Therefore, the Court concludes that
the ordinary and customary meaning of “up an embankment to an on-land position,” as
understood in the context of the claimed invention by one skilled in the art at the time of
the invention, is “up an embankment to a position out of and away from the waterway.”
F.

“an exterior surface of the barge”

The term “an exterior surface of the barge” appears in Claims 1, 2, 3, 5, 6, 7, 9,
10, 11, 12, 18, and 19. The parties propose the following competing constructions of
the term “an exterior surface of the barge”:

Page 12 of 35

Plaintiff’s Proposed Construction
[The term need not be construed.]

Defendants’ Proposed Construction
the outside of the hull of the barge

Each of the independent claims (Claims 1, 9, 18, and 19) uses the article “an,” as in “an
exterior surface of the barge,” whereas each of the dependent claims (Claims 2, 3, 5, 6,
7, 10, 11, and 12) uses the article “the.” (Docket No. 1-1, at 27-29.)
This disputed term turns on whether “an exterior surface of the barge”
necessarily means “the entire outside of the hull of the barge,” as Defendants argue.
(See Docket No. 80, at 22.)

Defendants, in their briefing, play loose with the

interchangeability of “an” and “the.” But these articles have distinct and settled
meanings in the context of claim construction. In Baldwin Graphic Systems, Inc. v.
Siebert, Inc., the Federal Circuit unequivocally defined the meaning of the term “an,”
writing: “[T]his court has repeatedly emphasized that an indefinite article ‘a’ or ‘an’ in
patent parlance carries the meaning of ‘one or more’ in open-ended claims containing
the transitional phrase ‘comprising.’ That ‘a’ or ‘an’ can mean ‘one or more’ is best
described as a rule, rather than merely as a presumption or even a convention.” 512
F.3d 1338, 1342 (Fed. Cir. 2008) (internal quotation marks and citation omitted)
(quoting KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000)).
“An exception to the general rule that ‘a’ or ‘an’ means more than one only arises where
the language of the claims themselves, the specification, or the prosecution history
necessitate a departure from the rule.” Id. at 1342 (citing Abtox, Inc. v. Exitron Corp.,
122 F.3d 1019 (Fed. Cir. 1997); Insituform Techs., Inc. v. Cat Contracting, Inc., 99 F.3d
1098 (Fed. Cir. 1996)). Here, the record does not contain a clear indication that Plaintiff
intended to depart from this rule, as nothing in the claim language, specification, or

Page 13 of 35

prosecution history compels an alternate reading of the indefinite article “an.”
Furthermore, the use of the definite article “the” in the dependent claims does not
mandate a different construction for those terms. See id. (“[T]he use of a definite article
(‘said’ or ‘the’) to refer back to an initial indefinite article does not implicate, let alone
mandate the singular.”)
Of additional note, Defendants suggest that “exterior surface of the barge” must
refer to the hull of the barge and not any of the top surfaces of the barge, such as the
weather decks and hatch coverings, which are not typically blasted. Plaintiff does not
appear to contest this point.
Accordingly, the Court concludes that the ordinary and customary meaning of
“an exterior surface of the barge,” as understood in the context of the claimed invention
by one skilled in the art at the time of the invention, is “one or more exterior surfaces of
the hull of the barge.”
G.

“blast area” and “abrasive blast area”

The term “blast area” appears in Claims 1, 2, 3, 5, 6, 7, and 18. The term
“abrasive blast area” appears in Claim 17. The parties propose the following competing
interpretations of the terms “blast area” and “abrasive blast area”:
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

a housing or building in which the barge an area within a refurbishing system in
is abrasively blasted
which a covered blast system is located
and which is distinct from the covered
coating area
In independent Claims 1 and 18, the term “blast area” is preceded by the modifier
“covered” to read “covered blast area.” Claims 1 reads, in relevant part:

Page 14 of 35

abrasive blasting an exterior surface of the barge with an abrasive
media while the barge is positioned within the covered blast
area;
moving the other transport system and barge to a covered coating
area; and
applying a coating to the exterior surface of the barge while the
barge is positioned within the covered coating area.
(Docket No. 1-1, at 27 (emphasis added).)
Defendants argue that, based on the patent specifications, the “blast area” must
be distinct from the “coating area.”

Defendants reason that Plaintiff’s proposed

construction would provide that the entire building in which the barge is blasted is the
“blast area” and that the entire building in which the barge is coated is the “coating
area.” Defendants insist that if the blasting and coating were performed in the same
building, this would lead to the improper overlap of separate claim elements.
As the Federal Circuit advised in Becton, Dickinson & Co. v. Tyco Healthcare
Group, LP, “[c]laim construction ‘begins and ends in all cases with the actual words of
the claim.’” 616 F.3d 1249, 1254 (Fed. Cir. 2010) (quoting Renishaw, 158 F.3d at
1248). “Where a claim lists elements separately, ‘the clear implication of the claim
language’ is that those elements are ‘distinct component[s]’ of the patented invention.”
Id. (alteration in original) (quoting Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed.
Cir. 2004)); see also CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co., 224 F.3d
1308, 1317 (Fed. Cir. 2000); Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398, 140405 (Fed. Cir. 1996). In this instance, Claim 1 lists “covered blast area” and “covered
coating area” as separate elements. That Claim 1 states that the barge is “mov[ed]” to a
covered coating area further confirms that the two areas are separate and distinct within
the meaning of that claim. The Court thus reads Claim 1 to require a covered blast area
Page 15 of 35

that is distinct from the covered coating area. Construing the “covered blast area” and
“covered coating area” as distinct areas does not, however, mean that those two areas
necessarily must be in separate buildings or separate structures. What it does mean is
that the “blast area” and “coating area” must be distinct and separate areas if both are
located in the same building or housing. Accordingly, for purposes of Claim 1, the
Court construes “blast area” as “an area in which the barge is abrasively blasted and
which is distinct from the covered coating area.”
Claims 17 and 18, on the other hand, do not identify a coating area that is
separate and distinct from the “abrasive blast area” in Claim 17 or the “covered blast
area” in Claim 18. Claim 17 is addressed to the blasting process and does not mention
the term “coating.” Claim 18 reads, in relevant part:
abrasive blasting an exterior surface of the barge with an abrasive
media while the barge is positioned within the covered blast
area; and
apply a coating to the exterior surface of the barge.
(Docket No. 1-1, at 28 (emphasis added).) In these instances, the Court finds no reason
to similarly require that the “blast area” be distinct from the area in which the barge is
coated. Therefore, the Court construes “abrasive blast area” in Claim 17 and “blast
area” in Claim 18 to mean “an area in which the barge is abrasively blasted.”
H.

“abrasive blasting”

The term “abrasive blasting” appears in Claims 1, 2, 3, 5, 6, 7, and 18. The
parties propose the following competing interpretations of the term “abrasive blasting”:
Plaintiff’s Proposed Construction
[The term need not be construed.]

Defendants’ Proposed Construction
operatively controlled blast processing

Page 16 of 35

Plaintiff insists that there is no reason to construe the term “abrasive blasting” because
that term is easily understood, even by a layperson. Defendants argue that “the abrasive
blasting . . . must be automatic such that it is operatively controlled without human
intervention.” (Docket No. 80, at 26.) Defendants further posit that “[b]ecause a core
component of [Plaintiff]’s invention is a highly automated system wherein blasting is
‘automatic’ without human intervention . . . the claims must be construed accordingly.”
(Docket No. 82, at 9.) Plaintiff responds, arguing: “[T]here is nothing in claim 1 that
requires the abrasive blasting to be performed by machine. Instead, ‘abrasive blasting’
as used in claim 1 encompasses both machine and manual abrasive blasting . . . .
[C]laim 1 merely requires ‘abrasive blasting,’ not how it is performed.” (Docket No.
81, at 14-15.)
Again, Defendants seek to import limitations from the preferred embodiment
into the patent claims. Nowhere in either Claim 1 or Claim 18 is it claimed or implied
that the abrasive blasting must be “automatic” or “operatively controlled without human
intervention.” (See Docket No. 1-1, at 27-28.) The abstract of the ’410 Patent, which
provides a brief overview of the invention, similarly makes no mention of the
refurbishing system as being “highly automated.”

(See Docket No. 1-1, at 1.)

Defendants’ out-of-context reference to the prosecution history and the inventor’s
declaration also is unavailing. Therefore, the Court declines to adopt the Defendants’
proposed construction and, accordingly, concludes that no further construction of this
term is necessary.

Page 17 of 35

I.

“the barge is positioned within the covered blast area”

This term appears in Claims 1, 2, 3, 5, 6, 7, and 18. The parties propose the
following constructions of the term “the barge is positioned within the covered blast
area”:
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

the barge is located within a housing or the barge is contained within the covered
building in which the barge is blasted
blast area
The dispute over this term centers on whether “positioned within” means “contained
within.”
Defendants insist that “‘positioned within’ means the whole barge is contained
within [the covered blast area].” (Docket No. 83, at 63; see also Docket No. 80, at 20
(arguing that “positioned within” means that “the entire barge must be contained within
the blast area while being abrasively blasted”).) The Court disagrees. The Defendants’
proposed construction would render the patent claims inconsistent with the embodiment
disclosed in patent. See Phillips, 415 F.3d at 1316 (instructing that “claims must be
construed so as to be consistent with the specification”); Merck & Co. v. Teva Pharm.
USA, Inc., 347 F.3d 1367, 1371 (Fed. Cir. 2003) (same). In Figure 12 of the ’410
Patent’s drawings, the forward portion of the barge is abrasively blasted while the rear
portion of the barge extends outside the covered blast area. (See Docket No. 1-1, at 12.)
Thus, the patent itself shows that the entire barge is not necessarily contained within the
blast area at the time that a portion of the barge is abrasively blasted. Accordingly, the
Court declines to rewrite the claim term “positioned within” as “contained within.” The
word “positioned” in the term “positioned within the covered blast area” means exactly
what it says and can be readily understood by a jury to have its plain, ordinary meaning
Page 18 of 35

of “placed,” “situated,” or “located” within the covered blast area (as the term “blast
area” is construed supra Part G). As such, the Court declines to adopt either party’s
proposed construction and instead finds that no further construction of this term is
necessary.
J.

“moving the other transport system and barge”

The term “moving the other transport system and barge” appears in Claims 1, 2,
3, 5, 6, and 7. The parties propose the following competing constructions:
Plaintiff’s Proposed Construction
[This term need not be construed.]

Defendants’ Proposed Construction
moving the other transport system and
barge after completion of abrasive
blasting

The principal contest to the construction of this term is whether “moving the other
transport system and barge” means “moving the other transport system and barge after
completion of the abrasive blasting.” The disputed claim term appears twice in the
body of Claim 1:
moving the other transport system and barge from the on-land
position into a covered blast area;
abrasive blasting an exterior surface of the barge with an abrasive
media while the barge is positioned within the covered blast
area;
moving the other transport system and barge to a covered
coating area; and
applying the coating to the exterior surface of the barge while the
barge is positioned within the covered coating area.
(Docket No. 1-1, at 27 (emphasis added).)
Defendants propose that the latter appearance of the term should be construed
with the appended language “after the completion of the abrasive blasting.”
(Defendants presumably do not propose such construction with the former appearance
Page 19 of 35

of the term.)

In essence, Defendants seek to have the claim require that the blasting

process be completed before the coating process begins. The Court finds that the
Defendants’ proposed construction imports an unnecessary limitation into the already
clear language of Claim 1. Moreover, such a construction would be inconsistent with
the Court’s construction of the terms “blast area” and “abrasive blast area” supra Part
G. As such, the Court declines to adopt the Defendants’ proposed construction and
concludes that no further construction of this term is necessary.
K.

“coating area”

The disputed term “coating area” appears in Claims 1, 2, 3, 5, 6, and 7. The
parties propose the following competing constructions of the term “coating area”:
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

If construed, the term “coating area” must
be construed as “a covered coating area”
and it would be understood by one of
ordinary skill in the art to mean a housing
or building in which the barge is coated
or painted

an area within a refurbishing system in
which a covered coating system is located
and which is distinct from the covered
blast area

In Claim 1, the term “coating area” is preceded by the modifier “covered”:
moving the other transport system and barge to a covered coating
area; and
applying a coating to the exterior surface of the barge while the
barge is positioned within the covered coating area.
(Docket No. 1-1, at 27.) The dispute over the proper construction of “coating area” is
much the same as the dispute over the term “blast area,” which was dealt with earlier in
this Opinion. Upon considering the parties’ instant arguments, the Court finds that its
reasoning in Part G, supra, applies with equal force to the construction of the term
“coating area.” Therefore, for purposes of Claim 1, the Court construes “coating area”
Page 20 of 35

to mean “an area in which the barge is coated or painted and which is distinct from the
covered blast area.”
L.

“the barge is positioned within the covered coating area”

This term appears in Claims 1, 2, 3, 5, 6, and 7. The parties propose the
following competing constructions of the term “the barge is positioned within the
covered coating area”:
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

the barge is located within a housing or the barge is contained within the covered
building in which the barge is coated or coating area
painted
The dispute over the proper construction of “positioned within the covered coating
area” is much the same as the previously discussed dispute regarding the term
“positioned within the covered blast area.” The Court finds that its reasoning in Part I,
supra, applies with equal force to the construction of the term “the barge is positioned
within the covered coating area.”

Just as the Court concluded above, the word

“positioned” in the term “positioned within the covered coating area” means exactly
what it says and can be readily understood by a jury to have its plain, ordinary meaning
of “placed,” “situated,” or “located” within the covered coating area. Thus, the Court
again declines to rewrite the claim term “positioned within” as “contained within,” as
Defendants urge. Accordingly, the Court declines to adopt either party’s proposed
construction and again finds that no further construction of this term is necessary.

Page 21 of 35

M.

“discharge the abrasive media”

The term “discharge the abrasive media” appears in Claim 19. The parties
propose the following competing constructions of the term “discharge the abrasive
media”:

Plaintiff’s Proposed Construction
[The term need not be construed.]

Defendants’ Proposed Construction
being operative controlled to uniformly
distribute the abrasive media based on
movement of a transportation system

Claim 19 reads, in pertinent part:
A refurbishing system for refurbishing a barge on land, the
system, comprising:
a covered blast system positioned on land, the covered blast
system having a blast media storage tank which stores
abrasive media, the covered blast system further having a
blast media discharge system in communication with the
blast media storage tank, the blast media discharge system
comprising a plurality of blast discharge nozzles;
a transportation system having rails, the rails being positioned
within the covered blast system and positioned under blast
discharge nozzles of the plurality of blast discharge nozzles,
the transportation system being configured to move the
barge into the covered blast system wherein the plurality of
blast discharge nozzles discharge the abrasive media
against an exterior surface of the barge . . . .
(Docket No. 1-1, at 28-29 (emphasis added).)
Plaintiff argues that the Court need not construe the term “discharge the abrasive
media” because that term “is simple, straightforward, unambiguous, and simply means
‘discharge the abrasive media.’” (Docket No. 79, at 25.) Defendants argue that the
term should be construed as “being operatively controlled” because “the abrasive

Page 22 of 35

blasting . . . must be automatic such that it is operatively controlled without human
intervention.” (Docket No. 80, at 26.) Defendants also argue that the term should be
construed to require the “uniform distribution of the abrasive media,” as set out in the
specification. (Docket No. 80, at 27-28.) Finally, Defendants insist that the term should
be construed with the limitation that the automatic abrasive blasting be “based on the
movement of the barge or the transportation system.” (Docket No. 80, at 27-28.)
The Court finds that the Defendants’ proposed construction improperly imports
limitations from the patent specifications into Claim 19. See, e.g., Arlington Indus., 632
F.3d at 1254 (holding that “even where a patent describes only a single embodiment,
claims will not be read restrictively unless the patentee has demonstrated a clear
intention to limit the claim scope using words of expressions of manifest exclusion or
restriction”). Nowhere in Claim 19 is it claimed or implied that the “discharge [of] the
abrasive media” must be either “automatic” or “operatively controlled without human
intervention.” (See Docket No. 1-1, at 28-29.) Again, the abstract of the ’410 Patent
makes no mention of the refurbishing system as being “highly automated.” (See Docket
No. 1-1, at 1.) Further, Defendants’ references to the prosecution history and the
inventor’s declaration do not compel the conclusion Defendants advance. In sum, the
additional limitations Defendants propose—operative control, uniform distribution, and
that the discharge be based on the movement of the barge or transportation system—
would serve to improperly limit the scope of the claim to the only embodiment
disclosed in the specification. See, e.g., Phillips, 415 F.3d at 1323. Therefore, the Court
declines to adopt the Defendants’ proposed construction and, instead, concludes that no
further construction of this term is necessary.

Page 23 of 35

N.

“configured to discharge the abrasive media”

The term “configured to discharge the abrasive media” appears in Claims 9, 10,
11, and 12. The parties propose the following competing constructions of this term:

Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“configured to discharge the abrasive operatively controlled to uniformly
media” means that a plurality of nozzles distribute the abrasive media based on
can propel a substance with sufficient movement of a transportation system
force to remove debris, rust, corrosion,
etc. from an exterior surface of the barge
Claim 9 reads, in relevant part:
A refurbishing system for refurbishing a barge, the system,
comprising:
a covered blast system having a blast media storage tank
which stores abrasive media, the covered blast system
further having a blast media discharge system in
communication with the blast media storage tank, the blast
media discharge system comprising a plurality of blast
discharge nozzles which are configured to discharge the
abrasive media against an exterior surface of the barge;
....
a transportation system, the transportation system having rails
and a wheeled platform, the rails being positioned within
the covered blast system and positioned under blast
discharge nozzles of the plurality of blast discharge nozzles,
the wheeled platform being operatively connected to the
rails and is configured to move the barge through the
covered blast system.
(Docket No. 1-1, at 28 (emphasis added).)
Defendants propose the same construction for this term as they did for the term
“discharge the abrasive media.” The Court’s reasoning in Part M, supra, applies with
equal force to the construction of the term “configured to discharge the abrasive media”
Page 24 of 35

appearing in Claim 9. The meaning of the term “configured” does not appear to be
disputed. As used in Claim 9, “configured” means exactly what it says and can be
readily understood by a jury to have its plain, ordinary meaning of “to set up for
operation or use especially in a particular way.” See WEBSTER’S, http://unabridged.
merriam-webster.com/unabridged/configured.

As such, the Court declines to adopt

either party’s proposed construction and concludes that no further construction of this
term is necessary.
O.

“causing the blast media discharge system to discharge blast media”

This term appears in Claim 17. The parties propose the following competing
constructions of the term “causing the blast media discharge system to discharge blast
media”:
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

If construed, one of ordinary skill the blast media discharge system
understand that the term “causing distributes abrasive media based on
discharge system to discharge blast movement of the barge
effecting the propelling of (e.g. blasting)
a substance with sufficient force to
remove debris, rust, corrosion, etc. from
the exterior of the barge 5
Claim 17 reads:
A method of refurbishing a barge, the method comprising
laterally moving the barge from an inland waterway up an
embankment to position on-land, and thereafter longitudinally
moving the barge into an enclosed abrasive blast area, the blast
area comprising a blast media discharge system, producing
relative movement between the barge and the blast media
discharge system while causing the blast media discharge
5

Plaintiff’s proposed construction, which is recited here exactly as it appears in the Joint Claim
Construction Statement, (Docket No. 78, at 8), and in their Brief, (Docket No. 79, at 27), is unclear to the
Court as written.

Page 25 of 35

system to discharge blast media in a predetermined pattern into
contact with sides and bottom of the barge, and automatically
controlling at least one of the producing relative movement and
the causing the blast media discharge system to discharge
blast media in a predetermined pattern.
(Docket No. 1-1, at 28 (emphasis added).)
Plaintiff argues that this term “simply means that the blast media is discharged
to remove debris, rust, corrosion, etc. from an exterior surface of the barge.” (Docket
No. 79, at 27.) Defendants propose that the term should be construed to mean that the
abrasive blast media is discharged “based on the movement of the barge.” (Docket No.
80, at 27.) Claim 17 appears to already include this limitation. (See Docket No. 1-1, at
28 (“the method comprising . . . producing relative movement between the barge and
the blast media discharge system . . . and automatically controlling at least one of the
producing relative movement”).) It is therefore unclear to the Court precisely what
Defendants seek by their proposed construction.

Plaintiff’s proposed construction,

which itself is unclear, offers little help. It seems that Defendants seeks to construe the
broader phrasing of Claim 17 with the summary construction “based on the movement
of the barge”—that is, Defendants seem to propose a construction that summarizes both
the disputed term and other terms in Claim 17. But such a construction would appear
unnecessary when reading Claim 17 in its entirety.

Ultimately, the Court is at

something of a loss as to what the parties actually dispute here. As such, the Court
declines to adopt either party’s proposed construction and concludes that no further
construction of this term is necessary.

Page 26 of 35

P.

“configured to move the barge through the covered blast system”

The term “configured to move the barge through the covered blast system”
appears in Claims 9, 10, 11, and 12. The parties propose the following competing
constructions of that term:
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

the wheeled platform can convey the operatively controlled to continuously
barge through at least the portion of a move the barge through the covered blast
building or housing in which the blast system
system is located
The body of independent Claim 9 contains the following limitation:
a transportation system, the transportation system having rails and
a wheeled platform, the rails being positioned within the
covered blast system and positioned under blast discharge
nozzles of the plurality of blast discharge nozzles, the wheeled
platform being operatively connected to the rails and is
configured to move the barge through the covered blast
system.
(Docket No. 1-1, at 28 (emphasis added).)
Defendants point to the specification and also reference the prosecution history
to argue that “configured to move” must mean “operatively controlled to continuously
move.” (Docket No. 80, at 35-36.) Plaintiff maintains that the term “simply means that
the wheeled platform . . . conveys the barge through the portion of the building in which
the blast system is contained.” (Docket No. 79, at 28.)
The ultimate dispute here is whether “configured to move” should be construed
as “operatively controlled to continuously move.” While Claim 9 states that “the
wheeled platform be[] operatively connected to the rails,” nowhere is it either claimed
or implied that the wheeled platform be “operatively controlled” or that it move the

Page 27 of 35

barge “continuously,” as Defendants propose. Again, the Court declines to import such
limitations from the patent specification into Claim 9.
Furthermore, Defendants’ reference to the prosecution history is unpersuasive.
Specifically, Defendants first point to the patent examiner’s “interview summary” dated
February 17, 2010, which reads: “Applicant and his counsel argued that . . . the prior art
method differs from the claimed invention in that it is not performed in a continuous
manner at a single location. The examiner advised Applicant to amend the claims to
include limitations believed to be salient.” (Docket No. 80-2, at 85.) Defendants then
point to “Amendment C,” which is dated April 14, 2010, and in which Plaintiff
amended what would become Claim 9 to include the instant disputed claim term. (See
Docket No. 80-2, at 87, 92.) But that amendment to what would become Claim 9
makes no mention of the terms “operatively controlled” or “continuously.” In fact, as
best the Court can tell, those terms do not appear at all in Amendment C. Thus, the
Court is unpersuaded that the examiner’s interview notes somehow require that the
instant disputed term be construed in the way Defendants propose.
Plaintiff’s proposes construction must be rejected for different reasons. For one,
Plaintiff’s proposed construction introduces more ambiguity than clarity. For another,
the construction Plaintiff proposes for this term is inconsistent with the construction it
proposes for the substantially similar term “configured to move the barge into the
covered blast system,” which will be discussed infra Part Q.
Accordingly, the Court must decline to adopt either party’s proposed
construction. The Court previously found that, as used in Claim 9, “configured” means
exactly what it says and can be readily understood by a jury to have its plain, ordinary

Page 28 of 35

meaning of “to set up for operation or use especially in a particular way.” Therefore,
the Court again concludes that no further construction of this term is necessary.
Q.

“configured to move the barge into the covered blast system”

This disputed claim term appears in Claim 19.

The parties propose the

following competing constructions:
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

the transportation system is adapted to operatively controlled to continuously
convey the barge into a building or move the barge through the covered blast
housing that contains the blast system
system
The body of Claim 19 contains the following limitation:
a transportation system having rails, the rails being positioned
within the covered blast system and positioned under blast
discharge nozzles of the plurality of blast discharge nozzles,
the transportation system being configured to move the barge
into the covered blast system wherein the plurality of blast
discharge nozzles discharge the abrasive media against an
exterior surface of the barge . . . .
(Docket No. 1-1, at 28-29 (emphasis added).)
Defendants propose a construction for this term identical to the construction
they proposed for “configured to move the barge through the covered blast system” in
Claim 9. For the same reasons discussed supra Part P, the Court declines to adopt either
party’s proposed construction and again concludes that no further construction of this
term is necessary.
R.

“control system which automatically controls the wheeled platform
and the blast system”

This disputed term appears in dependent Claim 10. The parties propose the
following competing constructions:
Page 29 of 35

Plaintiff’s Proposed Construction
[The term need not be construed.]

Defendants’ Proposed Construction
control system which operatively controls
the wheeled platform and the blast system

Claim 10 depends on independent Claim 9. Thus, Claim 10 incorporates all of the
limitations of Claim 9 and adds a further limitation: “The refurbishing system of claim
9 further comprising a control system which automatically controls the wheeled
platform and the blast system.” (Docket No. 1-1, at 28.)
The only dispute here appears to be whether the term “automatically” should be
construed as “operatively.” Defendants argue that “operatively controls” is synonymous
with “automatically controls,” and propose that “automatically” should be construed as
“operatively” based on the patent specification’s use of that term. Defendants also point
the Court to several items of extrinsic evidence in support of its position.

First,

Defendants reference the Dictionary of Computer Science, Engineering, and
Technology, which defines “automatic” as “property pertaining to a process or device
which functions without intervention by a human operator under specified conditions.”
(Docket No. 80-7, at 4.) Second, Defendants state that the parties’ respective experts
agree that the term “automatically controlling” means “no human control” or “without
human intervention.” (Docket No. 80, at 39.) But despite arguing their proposed
construction at some length, Defendants fail to explain why “automatically” should
necessarily be construed as “operatively.” Ultimately, the dispute here appears to be
more over the meaning of the term than over its scope, which leads the Court to
question whether construction is even proper.

Cf. O2 Micro Int’l Ltd. v. Beyond

Innovation Tech. Co., 521 F.3d 1351, 1360-61 (Fed. Cir. 2008) (advising that courts
must resolve disputes over the scope of claim language even if the meanings of the
Page 30 of 35

words themselves are clear). Regardless, the Court finds no reason to rewrite Claim 10
as Defendants propose. The term “automatically” is commonly understood. Indeed, the
Defendants’ proposed construction would seem to make the language of Claim 10 less
clear . Accordingly, the Court concludes that no further construction of this term is
necessary.
S.

“producing relative movement [between the barge and the blast
media discharge system]”

The term “producing relative movement” appears in Claim 17. The parties
propose the following competing constructions of that term:
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

causing the barge and/or the blast media the barge continuously moves through the
discharge system to move with respect to abrasive blast area and the blast media
one another
discharge system
Claim 17 reads:
A method of refurbishing a barge, the method comprising
laterally moving the barge from an inland waterway up an
embankment to position on-land, and thereafter longitudinally
moving the barge into an enclosed abrasive blast area, the blast
area comprising a blast media discharge system, producing
relative movement between the barge and the blast media
discharge system while causing the blast media discharge
system to discharge blast media in a predetermined pattern into
contact with sides and bottom of the barge, and automatically
controlling at least one of the producing relative movement and
the causing the blast media discharge system to discharge blast
media in a predetermined pattern.
(Docket No. 1-1, at 28 (emphasis added).)
Defendants argue that the term “producing relative movement” should be
interpreted consistently with the terms “configured to move the barge through the

Page 31 of 35

covered blast system” and “configured to move the barge into the covered blast
system.” (Docket No. 80, at 33.) Much like the Court reasoned in its discussion of
those terms in Parts P & Q, supra, nowhere in Claim 17 is it either claimed or implied
that the barge must move continuously. Accordingly, the Court declines to import such
a limitation into Claim 17.
Furthermore, Plaintiff explains that the relative movement between the barge
and the blast media discharge system could occur in several different ways: one, the
barge could move while the blast media discharge system remains stationary; two, the
barge could remain stationary while the blast media discharge system is moved; or
three, both the barge and the blast media discharge system could be moving at the same
time. Plaintiff insists that the language in Claim 17 “was clearly designed to encompass
all three of those situations.” (Docket No. 79, at 30-31.) The Court agrees and, in this
instance, finds that Plaintiff’s proposed construction appropriately captures the meaning
of “producing relative movement,” as that term would be understood in the context of
the claimed invention by one skilled in the art at the time of the invention. Therefore,
the Court construes “producing relative movement between the barge and the blast
media discharge system” to mean “causing the barge and/or the blast media discharge
system to move with respect to one another.”
T.

“predetermined pattern”

This term also appears in Claim 17.

The parties propose the following

competing constructions of the term “predetermined pattern”:

Page 32 of 35

Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

a distribution of the blast media a uniform distribution pattern determined
discharged by the blast media discharge prior to moving the barge into the
system
abrasive blast area
Once again, Claim 17 reads:
A method of refurbishing a barge, the method comprising
laterally moving the barge from an inland waterway up an
embankment to position on-land, and thereafter longitudinally
moving the barge into an enclosed abrasive blast area, the blast
area comprising a blast media discharge system, producing
relative movement between the barge and the blast media
discharge system while causing the blast media discharge system
to discharge blast media in a predetermined pattern into contact
with sides and bottom of the barge, and automatically controlling
at least one of the producing relative movement and the causing
the blast media discharge system to discharge blast media in a
predetermined pattern.
(Docket No. 1-1, at 28 (emphasis added).)
Defendants argue that “[t]he specification requires that the predetermined
pattern of abrasive media be a uniform distribution.”

(Docket No. 80, at 32.)

Defendants further argue that “[t]he uniform distribution pattern must be determined
prior to moving the barge into the abrasive blast area.” (Docket No. 80, at 32.) Plaintiff
disagrees, insisting that “[t]he phrase ‘predetermined pattern’ is simple, straightforward,
and unambiguous,” and that there is no basis to import the limitations proposed by
Defendants. (Docket No. 79, at 31-31.) In this regard, Plaintiff posits that “there is no
reason why the ‘predetermined pattern’ cannot be decided after the barge is moved into
the blast area, but before blasting begins.”

(Docket No. 81, at 16 (emphasis in

original).)

Page 33 of 35

Webster’s Dictionary defines “predetermine” as “to determine beforehand” or
“to settle in advance.” WEBSTER’S, http://unabridged.merriam-webster.com/unabridged
/predetermined.

However, that the pattern for distribution must be “determined

beforehand” does not mean that the pattern must be “determined prior to moving the
barge into the abrasive blast area,” as Defendants suggest. Thus, the Court finds no
reason to import this limitation into the language of Claim 17.
Furthermore, that the specification discloses a preferred embodiment where the
“discharge nozzles [are] configured to uniformly distribute the abrasive media” does not
require that the term “predetermined pattern” be construed as “a uniform distribution
pattern.” Again, the Defendants’ proposed construction seeks to impermissibly import
limitations from the patent specification into Claim 17, thereby limiting the scope of the
patent claim to the preferred embodiment disclosed in the specification. See, e.g.,
Phillips, 415 F.3d at 1323.
Plaintiff’s proposed construction offers little help because it effectively ignores
the term “predetermined.” The Court agrees with Defendants that every term must be
given some effect. See Bicon, 441 F.3d at 950.

The Court is of the opinion that the

word “predetermined” can be readily understood by a jury to have its plain, ordinary
meaning of “determined beforehand” or “settled in advance.” The Court reads Claim
17 merely as requiring that the pattern be determined before the blast media is
discharged. Therefore, in giving effect to the term “predetermined,” the Court construes
the phrase “to discharge blast media in a predetermined pattern,” for purposes of Claim
17, to mean “to discharge blast media in a pattern determined before the blast media is
discharged.”

Page 34 of 35

U.

“automatically controlling”

The term “automatically controlling” appears in Claim 17. The parties’ propose
the following competing constructions of this disputed claim term:
Plaintiff’s Proposed Construction
[The term need not be construed.]

Defendants’ Proposed Construction
operatively controlling the activation of

Defendants advance essentially the same argument for this term as it did for the term
“automatically controls” in Claim 10. (See Docket No. 80, at 38-39.) For the same
reasons discussed supra Part R, the Court finds no reason to rewrite this claim term.

CONCLUSION
For the reasons discussed herein, the Court has determined that the disputed
claims are to be construed pursuant to this Claims Construction Memorandum Opinion
and Order.
IT IS SO ORDERED.

Date:

cc:

December 18, 2013

Counsel

Page 35 of 35