Kadant Johnson, Inc v. D'Amico et al

Filing 357

ORDER & REASONS re: Markman Hearing held on 10/5/2011. ORDERED that the disputed claims are defined as set forth herein. Signed by Judge Helen G. Berrigan on 2/23/12.(Reference: 11-036)(plh, )

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF LOUISIANA

KADANT JOHNSON, INC.

CIVIL ACTION

VERSUS

NO. 10-2869
Pertains only to 11-36

JOSEPH V. D’AMICO, LOUISIANA STEAM
EQUIPMENT, LLC and UTILITIES
OPTIMIZATION GROUP, LLC

SECTION “C” (2)

ORDER & REASONS

On October 5, 2011, the Court held a claim construction hearing to define the claims of U.S.
Patent No. 5,098,135 (‘135) entitled “Rotary Joint With Axial Compensation”(“rotary joint” or
“‘135 Patent”) pursuant to Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995).
Based on arguments and evidence presented at the hearing, the memoranda of the parties, the facts,
and the record in this case, the Court finds the definitions of the claims at issue as follows.

I. BACKGROUND
A. Procedural History
As stated in the Court’s January 9, 2012 Order, this case comprises claims from two
consolidated lawsuits. On June 21, 2010, Plaintiff filed his first suit in Alabama state court against
Joseph V. D’Amico (“D’Amico”), Louisiana Steam Equipment, LLC (“LSE”), Utilities
Optimization Group (“UO Group”), and affiliated companies, alleging breach of contract. (Rec.
Doc. 1-8). The case was removed on the basis of diversity jurisdiction, 28 U.S.C. § 1332, to the

Middle District of Alabama on July 6, 2010. (Rec. Doc. 1-2). The suit was transferred to this Court
and captioned 10-2869. (Rec. Doc. 5). On September 8, 2010, Defendants filed a Counterclaim
demanding declaratory judgment concerning portions of the four contracts Defendants entered into
with Plaintiff between 1993 and 2006. (Rec. Doc. 3). Defendants filed an amended counterclaim,
adding claims for unfair trade practices, defamation, and interference with a contract under various
state laws. (Rec. Doc. 75).
On September 30, 2010, Plaintiff filed his second suit in the Eastern District of Michigan
against LSE, LSE Systems, Inc. (“LSE Systems”), Utility Construction Group, Inc. (“UCG”), and
UO Group, alleging infringement of Plaintiff’s ‘135 Patent under 35 U.S.C. § 271(a) and (c). (Case
No. 11-36, Rec. Doc. 1). The Court has original jurisdiction over this case pursuant to 28 U.S.C.
§ 1338(a). The suit was transferred to this Court and captioned 11-36. (Case No. 11-36, Rec. Doc.
28). On January 18, 2011, the two suits were consolidated. (Rec. Doc. 34). The determinations
in this Order refer only to the patent infringement suit, Case No. 11-36.
B. Patent and Specific Claims at Issue
The parties do not dispute the following facts concerning the general role of a rotary joint
like the ‘135 Patent as a component of a paper-making machine. Paper is made by conveying a
mixture of cellulose fibers, water, and other chemicals over a series of rotating drums that are heated
with steam. Water in the mixture evaporates as the mixture moves from drum to drum. This process
turns the mixture into paper by the time it reaches the end of the manufacturing line. The steam that
heats the drums enters via rotary joints that are placed on each side of the drum. Rotary joints allow
the drum to rotate while passing liquid, which becomes steam, into and out of the drums. As the
drums heat up, they expand; as they cool, they contract. This lateral, or axial, movement creates the
potential for leakage of the drums, which creates difficulties in the paper-making process. The ‘135
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rotary joint represents a solution to this challenge in that, as Plaintiff’s counsel explained at the
Markman hearing and Defendants do not dispute, it “handles the pressure and the steam and the
water that’s flowing in and out without leaking.” (10/5/11 Tr. at 6).
The ‘135 Patent contains 12 claims. (Rec. Doc. 113, Ex. A at 6). The relevant claims for
defining the five terms at issue, indicated in boldface type, are as follows:
1. A rotary joint for a rotating drum having a journal having an axis of rotation
characterized by its ability to accommodate axial expansion comprising, in combination,
an annular mounting flange having an axis and a central passage, fastening means defined
on said flange for coaxially attaching said flange to the drum journal, an annular wear plate
having a central passage having an axis coaxially mounted on said flange, a seal surface
defined on said wear plate concentric to said plate axis, an elongated housing having an
internal chamber having a longitudinal axis, said housing having a port for communicating
with a fluid conduit fitting, support means supporting said housing substantially coaxial
with the journal axis of rotation, a cylindrical nipple partially within said housing chamber
having a longitudinal axis coaxial with said chamber axis, said nipple being axially
displaceable within said chamber, annular first sealing means interposed between said
nipple and said housing whereby said nipple is sealed with respect to said housing at all axial
nipple positions within said chamber, and second sealing means interposed between said
nipple and said wear plate.
6. In a rotary joint as in claim 1, said housing having a first end disposed toward said
wear plate, an annular end cap mounted upon said housing first end, said first sealing means
being mounted on said end cap.
(Rec. Doc. 113, Ex. A at 6) (emphasis added).
II. LAW & ANALYSIS
A. Applicable Law
A United States patent enjoys a presumption of validity. 35 U.S.C. § 282. Validity of a
current patent lasts until a challenger carries its burden of persuading a court that the patent can no
longer be accepted as valid. Monsanto Co. v. Scruggs, 342 F. Supp. 2d 584, 600 (N.D. Miss. 2004),
citing Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1534 (Fed. Cir. 1983). The challenger must
do so by clear and convincing evidence. Monsanto, 342 F. Supp. 2d at 600 (citing Loctite Corp. v.
Ultraseal Ltd., 781 F.2d 861, 872 (Fed. Cir. 1985) (overruled on other grounds). If the challenger
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cannot meet that burden, the court need only so state; it need not validate the patent at issue.
Monsanto, 342 F. Supp. 2d at 600.
“The limits of a patent must be known for the protection of the patentee, the encouragement
of the inventive genius of others and the assurance that the subject of the patent will be dedicated
ultimately to the public.” General Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 369 (1938).
This is to prevent a “zone of uncertainty which . . . would discourage invention.” United Carbon
Co. v. Binny & Smith Co., 317 U.S. 228, 236 (1942).
Whether a patent has been infringed is determined through a two-step analysis. Markman
v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc) (“‘[A] patent covers the
invention or inventions which the court, in construing its provisions, decides that it describes and
claims.’”) (quoting 3 William C. Robinson, The Law of Patents for Useful Inventions § 1091, 247
(1890)), aff’d, 517 U.S. 370 (1996). First, the claims of the patent at issue must be construed to
determine their meaning and scope; second, the claims must be compared to the allegedly infringing
device. Markman, 52 F.3d at 976 (citing Read Corp. v. Portec, Inc., 970 F.2d 816 (Fed. Cir. 1992)).
At this stage in the case, the Court is concerned only with the claim construction step in the
infringement analysis. Accordingly, the allegedly infringing device will be considered only insofar
as it provides meaningful context. The Court notes that the second step of a patent infringement
analysis is a question of fact. See DeMarini Sports, Inc. v. Worth, Inc., 239 F.3d 1314, 1322 (Fed.
Cir. 2001).
Claim construction, however, is a question of law to be decided by the Court. Markman, 52
F.3d 967, 977 (Fed. Cir. 1995) (en banc) aff’d, 517 U.S. 370. The meaning of some claim terms is
sometimes “readily apparent even to lay judges,” in which case claim construction “involves little
more than the application of the widely accepted meaning of commonly understood words.” See
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Phillips v. AWH Corp. (Phillips II), 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc). However, the
meaning of a claim term is frequently not apparent. Phillips, 415 F.3d at 1314. Even if a term’s
meaning seems immediately apparent, persons skilled in the art often use those terms
“idiosyncratically,” and thus the layman’s definition is incorrect or imprecise. Phillips, 415 F.3d at
1314. Thus, in most cases, claims are construed from the perspective of a person of ordinary skill
in the field of the invention. See Phillips, 415 F.3d at 1312-1312. Generally, both technical terms
and common language contained in a patent claim will be interpreted as having the meaning that a
person “experienced in the field of the invention” would understand it to have. Hoechst Celanese
Corp. v. B.P. Chems. Ltd., 78 F.3d 1575, 1578 (Fed. Cir. 1996). Further, the meaning of the term
is limited to what its meaning would have been as of the effective filing date of the application.
Phillips, 415 F.3d at 1313 (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc.,
381 F.3d 1111, 1116 (Fed. Cir. 2004). “[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.
To properly construe a claim, the Court looks first at the intrinsic evidence of the patent
record, which includes the claim language itself, the specification, and the relevant prosecution
history. See Alza Corp. V. Mylan Laboratories, Inc., 391 F.3d 1365, 1370 (Fed. Cir. 2004) (citing
Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001). Courts
must also look to other claims to interpret a disputed claim. Fonar Corp. v. Johnson & Johnson, 821
F.2d 627, 631 (Fed. Cir. 1987), cert. denied, 484 U.S. 1027 (1988) (overruled on other grounds by
Cardinal Chemical Co. v. Morton Intern., Inc., 508 U.S. 83 (1993)). Under 35 U.S.C. § 112
(“specification statute”), the specification is composed of both a written description and the claims:
The specification shall contain a written description of the invention, and of the
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manner and process of making and using it, in such full, clear, concise, and exact terms as
to enable any person skilled in the art to which it pertains, or with which it is most nearly
connected, to make and use the same, and shall set forth the best mode contemplated by the
inventor of carrying out his invention
The specification shall conclude with one or more claims particularly pointing out
and distinctly claiming the subject matter which the applicant regards as his invention.
35 U.S.C. § 112. A claim can be independent of other claims or dependent on another claim. A
dependent claim “should not be construed to have the same scope [as its corresponding independent
claim]; the dependent claim should have an additional limitation.” Lasermax, Inc. v. Glatter, 2005
WL 1981571, *4 (S.D.N.Y. 2005). Relatedly, the doctrine of claim differentiation “precludes
interpretations of claim language that render dependent claims too broad or independent claims too
narrow, but it should not be used to interpret an independent claim too broadly either.” Lasermax,
2005 WL at *4. Furthermore, when terms appear in different claims, the terms must be interpreted
consistently across all claims. See Southwall Technologies, Inc. v. Cardinal IG Co., 54 F.3d 1570,
1579 (Fed. Cir. 1995). Finally, when a claim provides for two separate elements, and the claim
“does not suggest that [one element] consists in part of a portion of the [other element],” the two
elements are not the same component. Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004).
Indeed, in that case, “‘the clear implication of the claim language’ is that those elements are ‘distinct
component[s]’ of the patented invention.” Becton, Dickinson and Co. v. Tyco Healthcare Group
LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (quoting Gaus, 363 F.3d at 1288).
As the specification statute makes apparent, the claims “do not stand alone. Rather, they are
party of a “‘fully integrated written instrument[.]’” Phillips, 415 F.3d at 1314 (citing Markman, 52
F.3d at 978). “For claim construction purposes, the description may act as a sort of dictionary,
which explains the invention and may define terms used in the claims.” Markman, 52 F.3d at 979.
The specification “‘is always highly relevant to the claim construction analysis. Usually, it is
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dispositive; it is the single best guide to the meaning of a disputed term.’” Phillips, 415 F.3d at 1314
(quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). “The close
kinship between the written description and the claims is enforced by the statutory requirement that
the specification describe the claimed invention in ‘full, clear, concise, and exact terms.’” Phillips,
415 F.3d at 1311 (quoting 35 U.S.C. § 112). It is important to note, however, that limitations from
the specification should not be imported into the claims. Retractable Technologies, Inc. v. Becton,
Dickinson and Co., 653 F.3d 1296, 1305 (Fed. Cir. 2011) (“There is a fine line between construing
the claims in light of the specification and improperly importing a limitation from the specification
into the claims.”).
In terms of intrinsic evidence, besides the claims and description, courts should also
investigate the patent’s prosecution history. The prosecution history “often lacks the clarity of the
specification and thus is less useful for claim construction purposes” because it consists of an
“ongoing negotiation between the [Patent & Trademark Office (“PTO”)] and the applicant, rather
than the final product of the negotiation.” Phillips, 415 F.3d at 1317. Nevertheless, it should not
be ignored because it can “often inform the meaning of the claim language by demonstrating how
the inventor understood the invention and whether the inventor limited the invention in the course
of prosecution, making the claim scope narrower than it would otherwise be.” Phillips, 415 F.3d
at 1317 (citing Vitronics, 90 F.3d at 1582-1583). The purpose of holding a patentee to the claim
construction that was argued during the patent prosecution is to preserve the public’s reliance on the
public records. Springs Window Fashions LP v. Novo Industries, L.P., 323 F.3d 989, 995 (2003).
A patent’s prosecution history may include that of patents originating from the same parent patent.
NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1293 (Fed. Cir. 2005). The prosecution
history of the foreign counterpart of a U.S. patent may be considered if it is relevant. See Caterpillar
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Tractor Co. v. Berco, S.p.A., 714 F.2d 1110, 1116 (Fed. Cir. 1983). This is true even though “the
varying legal and procedural requirements for obtaining patent protection in foreign countries might
render consideration of certain types of representations inappropriate.” Caterpillar, 714 F.2d at
1116.
The doctrine of claim construction differs in some ways for claims containing “means-plusfunction” language. The parties agree, as does this Court, that the fifth term to be defined, “support
means supporting said housing substantially coaxial with the journal axis of rotation,” contains such
language. The specification statute states:
An element in a claim for a combination may be expressed as a means or step for
performing a specified function without the recital of the structure, material, or acts in
support thereof, and such claim shall be construed to cover the corresponding structure,
material, or acts described in the specification and equivalents thereof.
35 U.S.C. § 112 (emphasis added). The Federal Circuit has explained that “[t]he construction of a
means-plus-function limitation includes two steps. First, we determine the claimed function.
Second, we identify the corresponding structure in the written description that performs that
function.” JVW Enterprises, Inc. v. Interact Accessories, Inc., 424 F.3d 1324, 1330 (Fed. Cir. 2005)
(citations omitted). In the second step, “‘structure disclosed in the specification is ‘corresponding’
structure only if the specification or prosecution history clearly links or associates that structure to
the function recited in the claim.’” Medical Instrumentation and Diagnostics Corp. v. Elekta AB,
344 F.3d 1205, 1210 (Fed. Cir. 2003) (quoting B. Braun Med. Inc. v. Abbott Labs., 124 F.3d 1419,
1424 (Fed. Cir. 1997)).
As the specification statute explains, equivalents of a means-plus-function claim that “extend
beyond that which is explicitly disclosed in the patented document itself” can be interpreted to fall
under the claim’s scope. McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1347 (Fed. Cir. 2001).
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However, that scope “does not extend to all means for performing a certain function. Rather, the
scope of such claim language is sharply limited to the structure disclosed in the specification and
its equivalents.” J&M Corp. v. Harley-Davidson, Inc., 269 F.3d 1360, 1367 (Fed. Cir. 2001).
To determine whether or not a structure constitutes an equivalent of the structure described
in a means-plus-function claim, courts examine whether only “insubstantial” differences exist
between the structure described in the specification and its purported equivalent. Chiuminatta
Concrete Concepts, Inc. v. Cardinal Industries, Inc., 145 F.3d 1303, 1309 (Fed. Cir. 1998) (“The
proper test is whether the differences between the structure in the accused device and any disclosed
in the specification are insubstantial.”). In addition, courts may look to whether the purported
equivalent functions “substantially the same way” as the structure described in the specification.
Kemco Sales, Inc. v. Control Papers Co., Inc., 208 F.3d 1352, 1364 (Fed. Cir. 2000) (“[T]wo
structures may be ‘equivalent’ for purposes of section 112, paragraph 6 if they perform the identical
function, in substantially the same way, with substantially the same result.”). As with non meansplus-function claims, the prosecution history may aid the court in interpreting means-plus-function
claims. Alpex Computer Corp. v. Nintendo Co. Ltd., 102 F.3d 1214, 1221 (Fed. Cir. 1996) (“Just
as prosecution history estoppel may act to estop an equivalence argument under the doctrine of
equivalents, positions taken before the PTO may bar an inconsistent position on claim construction
under § 112[.]”) (citations omitted).
When interpreting claims, be they means-plus-function claims or not, “intrinsic evidence is
the most significant source of the legally operative meaning of disputed claim language.” Vitronics,
90 F.3d at 1582. Nonetheless, the Court may also consider extrinsic evidence, such as technical
manuals and drawings, dictionaries, expert testimony, and the testimony of the inventor, to
understand the technology involved in the patent and the allegedly infringing device. See EMI
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Group N. Am., Inc. v. Intel Corp., 157 F.3d 887, 892 (Fed. Cir. 1998). However, this extrinsic
evidence may not be used to contradict or alter the intrinsic evidence. See Mantech Envtl. Corp. v.
Hudson Envtl. Servs., Inc., 152 F.3d 1368, 1373 (Fed. Cir. 1998).

B. Meaning of the Disputed Terms
1. “Housing”
In their claim construction briefs, Plaintiff argue that “Housing” means “[a]n enclosure for
containing a cylindrical nipple.” (Rec. Doc. 179 at 5). Defendant argues that it means “the structure
of the rotary joint between (and not including) the end cap and a conduit introducing fluid into or
receiving fluid from the rotary joint.” (Rec. Doc. 166 at 16). At the Markman hearing and in the
parties’ post-Markman briefs, it became apparent that the core dispute is whether “Housing” should
be interpreted so broadly as to include other claim terms and in particular the “End Cap,” a claim
term defined in Claim 6. The issue is not, as Plaintiff contends, whether “Housing” must be formed
in a unitary structure. Defendants have not made such an argument. Instead, they argue that “End
Cap” is not part of “Housing.” In order for “Housing” to be interpreted consistently across all
claims, as it must, see Southwall, 54 F.3d at 1579, the Court finds that “End Cap” cannot be part of
“Housing.” Claim 6 states that in a rotary joint as described in Claim 1, a “housing having a first
end disposed toward said wear plate, an annular end cap mounted upon said housing first end, said
first sealing means being mounted on said end cap.” Col. 6, lines 9-12. Nothing in this sentence
indicates that “End Cap” is part of “Housing.” Accordingly, they are two distinct components. See
Gaus, 363 F.3d at 1288.
In addition, as Defendants indicate in their post-Markman brief, the specification’s
description of where “Housing” begins and ends indicates that “Housing” does not encompass “End
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Cap.” (Rec. Doc. 229 at 3). In particular, the description states: “[t]he fluid medium passing
through the joint 10 communicates with the housing chamber 60 by means of the fitting 108 attached
to the housing end,” Col. 4, lines 13-15, and “[a]n annular end cap 74 is mounted upon the inner
housing end 58 by a plurality of bolts 76 threaded into the housing.” Col. 3, lines 42-44. The Court
is aware that claims should not be strictly limited to the embodiments disclosed in the specification’s
written description, but claim language should not be “divorced” from the description. Retractable,
653 F.3d at 1305 (Fed. Cir. 2011). Here, the clear language describing the ends of “Housing” cannot
be ignored. Accordingly, the Court adopts Defendants’ definition of “Housing,” and the case
Plaintiff cites to dispel the notion that the housing is unitary is irrelevant. (Rec. Doc. 226 at 2)
(quoting Cross Medical Products, Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1309 (Fed.
Cir. 2005)).
2. “Internal Chamber”
Plaintiff argues that “Internal Chamber” means “[t]he internal space that the housing
surrounds, and into which the nipple is displaceable.” (Rec. Doc. 179 at 5). Defendants contend
that it means “the internal space of the housing between the two housing ends.” (Rec. Doc. 166 at
17). Claim 1 states that the rotary joint includes “an elongated housing having an internal chamber
having a longitudinal axis[.]” Col. 5, lines 25-26. Defendants do not dispute that the nipple is
displaceable within the housing’s internal chamber. Rather, the dispute is closely related to that in
interpreting “Housing.” Because the Court agrees with Defendants regarding the delimitations of
“Housing,” it adopts Defendant’s definition of “Internal Chamber.” The Court sees no need to add
Plaintiff’s clause regarding the nipple.
3. “Nipple Being Axially Displaceable Within Said Chamber”
Plaintiff states that “Nipple Being Axially Displaceable Within Said Chamber” means that
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“at least part of the nipple is interior to the housing chamber and part of the nipple is exterior to the
housing chamber and is moveable along an axis within the chamber.” (Rec. Doc. 179 at 5).
Defendant states that the term means “at least part of the nipple must actually extend into the
housing and be able to move within the housing.” (Rec. Doc. 166 at 18).

Claim 1 recites that a

rotary joint has a “cylindrical nipple partially within said housing chamber having a longitudinal axis
coaxial with said chamber axis, said nipple being axially displaceable within said chamber[.]” Col.
5, lines 30-33. The Court concludes that the parties’ definitions are not materially different. The
Court agrees with Plaintiff that the term “partially” indicates that part of the nipple is inside the
chamber, and part of the nipple is outside of the chamber, and it does not object to the additional
clarity that Plaintiff’s definition offers. Accordingly, the Court adopts Plaintiff’s definition of
“Nipple Being Axially Displaceable Within Said Chamber.”
4. “Characterized by Its Ability to Accommodate Axial Expansion”
Plaintiff’s definition of “Characterized by Its Ability to Accommodate Axial Expansion” is
“capable of adjusting its dimension along the axis of rotation of the drum journal as the drum and
journal extend their length.” Defendant define that term as “the axial expansion accommodated by
the nipple moving relative to the housing and this movement must be greater in degree than that
shown in the prior patents cited by the patentee in the ‘135 Patent’s file history.” (Rec. Doc. 166).
Claim 1 defines the ‘135 Patent as “[a] rotary joint for a rotating drum having a journal having an
axis of rotation characterized by its ability to accommodate axial expansion[.]” Col. 5, lines 17-19.
Expansion is a commonly understood word, and Defendants do not convince the Court that
a person skilled in the art understands the term differently in the context of paper-making machine
dryer drums that become larger due to heat. Thus, the claim term can be defined solely by
examining the claim itself, which does not quantify the extent of the rotary joint’s ability to manage
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the drum’s expansion. Instead, it merely states that the rotary joint has that ability, and nothing in
Claim 1 or any of the other claims describes the extent of this “ability.” Defendants state that
portions of the written description in the specification indicate that this “ability” must be substantial.
(Rec. Doc. 166 at 19). For instance, the description explains that “[i]t is an object of the invention
to provide a rotary joint for use with rotary drum type heat exchangers which is capable of
accommodating large axial dimensional variations due to thermal expansion and contraction.” Col.
1, lines 45-49. The description also states that “[a]n additional object of the invention is to provide
a rotary joint capable of accommodating significant dimensional variations.” Col. 1, lines 54-60.
While these adjectives may suggest that the term at issue should be limited to a certain amount of
expansion, the Court agrees with Plaintiff that the PTO would have required Plaintiff to add such
qualifiers to the claim term if it so intended to limit the claim. Accordingly, the Court adopts
Plaintiff’s definition of this term.
5. “Support Means Supporting Said Housing”
Plaintiff defines “Support Means Supporting Said Housing” as “[a]ny rigid support holding
the housing.” (Rec. Doc. 179 at 6). In contrast, Defendants define it as “the ‘135 support assembly
and equivalent structures, but not a ring bracket which is not an equivalent structure.” (Rec. Doc.
166 at 28). Thus, the narrow dispute here is whether a ring bracket is an equivalent structure to the
claim in question. According to Claim 1, one of the elements of a rotary joint is a “support means
supporting said housing substantially coaxial with the journal axis of rotation.” Col. 5, lines 28-30.
The Court does not adopt Plaintiff’s definition because it is too broad. While the scope of
a means-plus-function claim such as the one at issue extends beyond the function in the claim and
includes equivalents of that function, that scope is not limitless. See J&M Corp., 269 F.3d at 1367.
The first step of a means-plus-function claim analysis is to determine the claimed function. See JVW
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Enterprises, 424 F.3d at 1330. The Court finds, and the parties do not dispute, that the function of
a “support means supporting said housing” is “supporting said housing substantially coaxial with
the journal axis of rotation.” Col. 5, lines 29-30. The second step requires the Court to identify the
corresponding structure in the specification’s description that performs that function. See JVW
Enterprises, 424 F.3d at 1330. The corresponding structure is depicted as the yoke 62 operating
with the rods 66 and the brackets 72, depicted in Figures 3 and 4 of the ‘135 Patent (together, “‘135
support means”). The tests for determining whether a structure is an “equivalent” to the structure
disclosed in the specification are whether there are “insubstantial” differences between the two or
whether the two function in “substantially the same way.” See Chiuminatta, 145 F.3d at 1309;
Kemco, 208 F.3d at 1364.
Plaintiff has not convincingly rebutted Defendants’ contention that a support means that
supports the housing along the same axis as the journal axis of rotation can do so in a different
manner than the ‘135 support means does. Defendant’s expert testimony and the patent history of
the Chinese version of the ‘135 Patent indicates that the limitation in Defendants’ definition, namely,
that the “ring bracket” is not an equivalent structure to the “Support Means Supporting Said
Housing” in the ‘135 Patent, is appropriate. First, Defendants’ expert, Dr. James Rice, stated in a
Declaration that the differences between the ring bracket and the ‘135 support means are substantial
because the ring bracket can withstand stresses associated with a cantilever siphon of the type used
in the allegedly infringing device better than the ‘135 support means can. (10/5/11 Tr. at 54; Rec.
Doc. 166, Ex. C at ¶ 21). He also testified that the computer simulation model that he ran to
compare the ‘135 joint’s versus the allegedly infringing device’s ability to withstand stresses
associated with a cantilever siphon demonstrated that the former “failed” in “all cases.” (10/5/11
Tr. at 52). While Dr. Rice acknowledged that he has no results from actual tests, (10/5/11 Tr. at 50),
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the Court finds the computer simulation to be instructive. He also stated that it is substantially easier
to mount a rotary joint using a ring bracket compared with the ‘135 support means. (Rec. Doc. 166,
Ex. C at 22). Additionally, unlike the ‘135 support means, which causes the housing to remain
stationary relative to the thermal expansion of the dryer drum, a ring bracket moves the housing to
the same degree that the ring bracket itself moves. (Rec. Doc. 166, Ex. C at ¶ 24). This feature
prevents the nipple in a rotary joint supported by a ring bracket from moving within the housing as
the drum expands and contracts. This, in turn, enhances the rotary joint’s ability to accommodate
axial expansion. (Rec. Doc. 166, Ex. C at ¶ 24). Plaintiff responds that the ‘135 support means,
composed of the rods, yokes, and support structure depicted in Figures 3 and 4, constitutes a
“plurality of elongated supports securing the rotary joint to some fixed surface in the surrounding
environment.” (Rec. Doc. 179 at 17). Besides this generalized contention, Plaintiff does not attempt
to refute Defendants’ expert’s conclusion that the a ring bracket of the type described by Defendants
is substantially different than the support means depicted in the ‘135 Patent.
Second, Plaintiff’s statements to the Patent Reexamination Board of the Chinese Intellectual
Property Office through its Chinese subsidiary Kadant Johnson (Wuxi) Technology Co., Ltd.
(“Kadant Wuxi”) suggest that Plaintiff does not consider a ring bracket to be the equivalent of the
‘135 support means. In that dispute, a third party challenged the validity of Chinese Patent
0264368.0 (“‘368.0 Patent”), on the ground that another patent, Chinese Patent 91103998.8 (“‘998.8
Patent”), was too similar. Defendant argues that the ‘998.8 Patent, owned by Kadant Wuxi, is the
Chinese equivalent of the ‘135 Patent on the ground that the ‘998.8 patent claims priority to the ‘135
Patent and depicts the same drawings as the ‘135 Patent. (Rec. Doc. 166 at 27, note 10). In the
Chinese dispute, Kadant Wuxi argued that the “annular ring bracket” in the ‘368.0 Patent was
distinct from Kadant Wuxi’s support means for some of the same reasons that Dr. Rice outlined in
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comparing the ‘135 support means with the ring bracket. (Rec. Doc. 166, Ex. D at 34). Namely,
Kadant Wuxi argued that its support means was stationary, whereas the ring bracket allows “axial
and radial position of the joint relative to the drying cylinder”; and that the ring bracket was “more
easily controlled during the mounting process.” (Rec. Doc. 166, Ex. D at 34). Plaintiff cites Abbott
Laboratories v. Dey, L.P. for the proposition that a party may not use an unrelated patent’s
prosecution history to construe a claim in the patent before the court, where an “unrelated” means
that the offending patent is not a continuation from a common application, for instance. 287 F.3d
1097, 1104-1105. However, that rule exists in context of a prosecution history estoppel argument
by the alleged infringer. Defendants are not making such an argument, and Plaintiff offers no
authority showing that this exclusionary rule is equally applicable at the claim construction stage
of a patent lawsuit. Indeed, relevant foreign prosecution history of a related patent is “instructive,”
even if it does not have “the force of preclusion.”Merk & Co., Inc. v. Mylan Pharmaceuticals, Inc.,
19 F. Supp. 2d 334, 344, note 17 (E.D. Pa. 1998), aff’d, 190 F.3d 1335 (Fed. Cir. 1999). The Court
finds that the statements made by Kadant Wuxi are helpful in determining whether or not a ring
bracket is the equivalent of the ‘135 support means, and it agrees with Defendant that it is not. Thus,
the Court interprets “Support Means Supporting Said Housing” as “the ‘135 support assembly and
equivalent structures, but not a ring bracket.” The Court does not decide whether the particular
support means in Defendants’ allegedly infringing device constitutes a support means that is or is
not equivalent to the ‘135 support means, as it has not had the opportunity to examine that device,
and as that determination is a question of fact for the fact finder. See DeMarini, 239 F.3d at 1322;
Odetics, Inc. v. Storage Tech. Corp., 185 F.3d 1259, 1268 (Fed. Cir. 1999) (“Whether an accused
device infringes a [35 U.S.C.] § 112, ¶ 6 [i.e. means-plus-function] patent claim as an equivalent is
a question of fact.”).
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Accordingly,
IT IS ORDERED that the disputed claims are defined as set forth herein.

New Orleans, Louisiana, this 23rd day of February, 2012.

__________________________________
HELEN G. BERRIGAN
UNITED STATES DISTRICT JUDGE

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