Insituform Technologies, Incorporated et al v. Liqui-Force Services USA, Incorporated

Filing 151

MEMORANDUM OPINION and ORDER re Markman Hearing Signed by District Judge Lawrence P. Zatkoff. (MVer)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION
INSITUFORM TECHNOLOGIES, INC.,
and INA ACQUISITION CORP.,
Hon. Lawrence P. Zatkoff
Case No. 08-cv-11916

Plaintiffs,
v.
LIQUI-FORCE SERVICES (USA), INC.,
Defendant.
___________________________________/

OPINION AND ORDER CONSTRUING DISPUTED CLAIM TERMS
AT A SESSION of said Court, held in the United States Courthouse,
in the City of Port Huron, State of Michigan, on August 1, 2011
PRESENT: THE HONORABLE LAWRENCE P. ZATKOFF
UNITED STATES DISTRICT JUDGE

I. INTRODUCTION
This matter is before the Court on its March 17, 2011, order, setting a briefing schedule and
Markman hearing for interpretation of the terms in U.S. Patent Nos. 6,337,114 and 6,899,832. [dkt
88]. The parties have fully complied with the Court’s briefing schedule. The Court set the hearing
for July 26, 2011. On July 26, 2011, the hearing was held, wherein both parties’ counsel provided
argument to the Court supporting their respective positions. Both parties’ counsel also presented
an electronic presentation to the Court. At the conclusion of the hearing, the Court took the parties’
claim constructions under advisement, providing additional time to review the record, Markman
briefs, and arguments presented at the hearing. After such review, the Court has interpreted the
disputed phrases as set forth below.

II. BACKGROUND
Plaintiffs own patents on a technology referred to as “cured-in-place” pipeline repair, in
which a flexible resin-soaked liner is inserted into an existing pipeline. The liner then cures and the
structural integrity of the pipeline is restored, greatly reducing the repair expense as compared to
traditional pipeline repair. Plaintiffs hold U.S. Patent No. 6,337,114 (the “‘114 patent”) on the liner
itself and No. 6,899,832 (the “‘832 patent”) on the lining procedure. On May 6, 2008, Plaintiffs filed
this action alleging that Defendant is infringing the ‘114 and ‘832 patents by selling liner systems
and training its customers on the lining procedure. On May 26, 2009, pursuant to this Court’s order,
the case was stayed pending the outcome of reexamination proceedings as to the ‘114 and ‘832
patent. The reexamination proceedings have concluded, and the case has proceeded forward. After
conducting a status conference with the parties, a Markman hearing was scheduled and the Court
ordered a briefing schedule to identify the claim terms that the Court needs to interpret. The claim
phrases identified by the parties are found in the ‘114 and the ‘832 patents and are the subject of the
instant Markman proceeding before the Court.
A. BACKGROUND OF THE ‘114 AND ‘832 PATENTS
With respect to the technology disclosed in the ‘114 and ‘832 patents, sewer systems have
a main line which usually runs under a street. Lateral pipes then run from the main pipeline to
building structures. When the main pipeline (e.g., a sewer line) fails, ground water leaks into the
sewers (or sewage may leak into the ground). The increased ground water is then transported to the
sewage treatment plant, adding a substantial cost and expense to treat the additional ground water.
Systems were invented to repair the main pipeline, and also to repair the lateral pipes attaching
thereto. However, the junction where the lateral pipe attaches to the main pipeline has been difficult

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to repair for a number of reasons. The ‘114 and ‘832 patents tout an invention and method for
installing such invention that overcomes these difficulties.
i. The ‘114 Patent
The ‘114 patent was filed on September 30, 1997, and issued four-and-a- half years later, on
January 8, 2002, claiming a flexible lining with a flexible collar for lining lateral pipelines.
According to the specification, the ‘114 patent claims a liner that relines the junction between a
lateral pipe and a main pipeline. ‘114 patent, Col. 1, L. 15–20. The lateral pipe enters the main
pipeline sideways, similar to the way a main sewer line at the road joins a lateral pipe running from
a building. Id. at Col. 1, L. 26–30. When these joints begin to leak or become weak, the ‘114 patent
teaches a liner that may be placed in the joint to remedy the leak without replacing the main line or
lateral pipe. Id. at Col. 1, L. 30–40. The liner uses flexible tubular materials which are impregnated
with curable synthetic resin. Id. at Col. 1, L. 50–58. In practice, the lining is placed at the junction
of the lateral pipe and the main until the resin cures to a hard condition, leaving a hard lining and
a tight seal. Id. at Col. 1, L. 15–20. One preferred embodiment disclosed in the ‘114 Patent is a
lining tube with “a collar . . . which is preferably a sealed envelope containing a resin absorbent
material which is impregnated with curable synthetic resin similar to the tube itself. As the lining
tube . . . cures so the collar will also cure and the collar remains in place around the lateral aperture.”
Id. at Col. 4, L. 28–34. The collar fits around the opening where the lateral pipe joins the main
pipeline, and is pressed against it while the resin hardens. Id. at Col. 1, L. 55–60. In the end, the
integrity of the main pipeline and lateral pipe are restored.

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a. The Prosecution History of the ‘114 Patent
The parties have filed the prosecution history of the patents with the Court.1 Because the
parties rely on excerpts from the prosecution history of the ‘114 patent, it is summarized as follows.
While reviewing the claims in the ‘114 patent before it was issued, the United States Patent
and Trademark Office (“PTO”) initially rejected the claims through several office actions (an office
action is a document sent to the patent applicant to communicate information regarding the status
of the claims). Id. at ITI 172–177. The office action stated that the claims were anticipated (a
rejection under 35 U.S.C. § 102(b))2 by U.S. Patent No. 5,108,533 (the “Long Patent”). As indicated
in the office action, the Long Patent disclosed a flexible tubular member impregnated with a
thermoplastic resin and disclosed a flexible collar. The Long Patent’s tube and collar are formed
preferably of a felt fabric. In response to the rejection, an interview occurred between Plaintiffs’
representatives and a PTO Examiner. The PTO Examiner and Plaintiffs’ representatives discussed
the Long Patent. After the interview, the PTO Examiner prepared an interview summary. It
indicates that the applicant (i.e., Plaintiffs) would consider adding the following limitations: “(1) say
that the fibrous material is ‘resin absorbable’ . . . ; (2) define the collar as: (a) engaging the main
passageway so that it conforms to the shape thereof; and (b) being made of the same material as the
tube.” Id. at ITI 197.

1

The prosecution history “contains the complete record of all the proceedings before the Patent and
Trademark Office, including any express representations made by the applicant regarding the scope
of the claims.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed .Cir. 1996) (citations
omitted)
2

Under 35 U.S.C. § 102(b), a claim is rejected because “the invention was patented or described in
a printed publication . . . or in public use or on sale in this country, more than one year prior to the
date of the application for patent in the United States.”
4

After the interview, Plaintiffs filed a response, which in relevant part, stated:
As noted on the Examiner’s Interview Summary, Applicant’s
representatives pointed out the benefits of providing a liner having a
fully flexible collar formed of the same material as the tubular portion
of the lateral liner. Applicant has provided a flexible collar which is
free of the resilient retaining ring of the prior art and actually
conforms to the contour of the inner wall of the pipeline thereby
forming an improved seal in the junction between the main pipeline
and the lateral.
Id. at ITI 200 (emphasis added). In distinguishing the Long Patent in the response, Plaintiffs’
representatives stated, “In essence, [the Long Patent] provides for a temporary bending of the
retainer to allow installation. Applicant provides a conformable collar for forming the improved
seal.” Id. at ITI 202. Plaintiffs also modified the claim language at this juncture “to define the
flexible collar as free of additional stiffer material to distinguish further from [the Long Patent].”
Id. The response further states :
During the interview, the undersigned discussed various ways to
claim these features of Applicant’s liner. It is respectfully submitted
that by reciting that the collar is formed of the same flexible resin as
resin absorbable fibrous material as the tubular portion of the liner,
is sufficient to exclude stiffening members such as the retaining ring
of Long.
Id. at ITI 204 (emphasis added).
On June 14, 1999, the PTO examiner responded to Plaintiffs’ representatives’ March 31,
1999, response, still rejecting the claims for containing subject matter not described in the
specification under 35 U.S.C. § 112;3 and unpatentable over the Long Patent for the reasons stated

3

Under 35 U.S.C. § 112, “[t]he specification shall contain a written description of the invention, and
of the 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.”
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in its initial office action of December 10, 1998, under 35 U.S.C. § 103(a).4 The Examiner stated,
“The difference between [the Long Patent’s] ‘temporary bending’ and Applicant’s ‘conforming’ is
not clear.” Id. at ITI 233.
Plaintiffs’ representatives responded in December of 1999, and on June 14, 2000. Id. at ITI
244–250, 257–266. The December of 1999 response states, in part, “As discussed at page 7 of the
specification, collar 100 is formed of similar material as lining tube 14. Thus, both elements of the
liner are fully flexible and are able to conform to the unique shape and configuration of the
intersection.” Id. at ITI 246. The June 14, 2000, response states:
The preferred embodiment of the liner claimed . . . is as illustrated in
Fig. 7. The liner is formed of two separate sections of flexible fibrous
material which are bonded together. A collar 100 of the same resin
absorbable material is bonded to a lining tube 14 . . . .
[The Long Patent] describes the flexible tubular member assembly as
that of the conventional cured in place type liner constructed of a felt
fabric having a polymeric coating. The felt fabric layer is provided
to hold the curable resin with the polymeric coating preventing loss
of the resin . . . . [I]n contrast to this, by bonding two similar
materials applicant can provide the polymeric coating or the felt
layer on the upper surface of the collar facing the tubular portion.
This provides a liner wherein the resin impregnated felt material is
placed up against the interior of the lateral and is also against the
interior of the main line during installation from the main line out
into the lateral.
Id. at ITI 259 (emphasis added). Still, the Examiner held her position, stating that Plaintiffs’
principal independent claim was obvious from the disclosures in the Long Patent. Id. at ITI
271–278.

4

Under 35 U.S.C. § 103(a), a claim is rejected “if the differences between the subject matter sought
to be patented and the prior art are such that the subject matter as a whole would have been obvious
at the time the invention was made to a person having ordinary skill in the art.”
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Following another interview with the PTO Examiner, according to an interview summary
created by the PTO Examiner, the applicant was considering submitting claim language that further
distinguishes the ‘114 patent from the Long Patent. Id. at ITI 298. The response from Plaintiffs’
respresentatives essentially reiterated its prior comments regarding the distinctions between the
Long Patent and the ‘114 patent: “As [the Long Patent] teaches . . . ‘the flexible retainer 46 is
preferably positioned with a roll-over portion of the flexible tube 41.’ It is respectfully submitted
that there is simply no teaching or suggestion in [the Long Patent] to omit the retainer and provide
a liner as applicant shows in his Fig. 7. . . . The retaining feature of Long is a critical feature of the
Long device. This feature is absent in applicant’s construction.” Id. at ITI 305.
In July of 2001, the Patent Office mailed a Notice of Allowance of the patent claims.
Wherein the PTO Examiner highlighted why she had finally allowed the patent claims, noting:
The liners recited in Applicant’s claims, as amended, distinguish over
the Long, et al. liners because the absorbent and impregnable nature
of the liners and the fact that, as the resin absorbed therein cures, the
collar conforms to the shape of the passageway into which it has been
placed. The Long, et al. retainer is not designed to absorb resin, so
that it does not cure in a manner that makes it conform to the shape
of the passageway into which it was placed.
Id. at ITI 314–15).
Also in the prosecution history filed with the Court, is the reexamination proceedings of the
‘114 patent. According to an office action sent on March 10, 2010, regarding Claims 1 through 4,
the PTO Examiner, Terrence R. Till, rejected the claims as being anticipated by two Japanese
patents, particularly Japanese Patent No. S63-286325 (“Wakagi ‘325 patent”). The Examiner also
rejected the claims for being obvious in light of reading the Long Patent and the two Japanese
patents together.

7

In response to the reexamination, Plaintiffs filed a declaration of a Lynn E. Osborn and a Dr.
Richard Parnas. Both declarations have been submitted to the Court. Mr. Osborn is the Senior
Applications Manager in the Engineering Department of Plaintiffs. Dr. Richard Parnas, as of May
10, 2010, is a professor of Chemical Engineering at the University of Connecticut.

Both

declarations make assertions to distinguish the claims of the ‘114 patent from the prior art cited by
the patent examiner. Ultimately, the reexamination proceedings concluded and the ‘114 and ‘832
patents were issued as re-examined patents, finding the claims as patentable.
ii. The ‘832 Patent
The ‘832 patent was filed on January 7, 2002, and issued on May 31, 2005, claiming the
method for installing a flexible lining with flexible collar for lining lateral pipelines. ‘832 patent,
Col. 1, L. 23–30. The specification of the ‘832 patent is essentially identical to the ‘114 patent. The
‘832 patent claims no additional materials compared to the ‘114 patent.
B. DISPUTED CLAIM TERMS
After the parties submitted their initial briefs, the disputed terms were narrowed to two claim
phrases: (1) “resin absorbable flexible material” and (2) “resin impregnated material.” The phrase
“resin absorbable flexible material” is used in the ‘114 patent, as opposed to the phrase “resin
impregnated material,” which is used in the ‘832 patent. Although Claims 1, 4, 5, and 6 of the ‘114
patent contain the phrase “resin absorbable flexible material”, Claim 1 is representative of the
disputed claims with respect to the use of the phrase. It reads:
A liner of resin absorbent material for lining a lateral passageway
connected to a main passageway, comprising:
a lining tube of resin absorbable flexible material formed with a
lumen conforming to the dimensions of the lateral having a collar of
resin absorbable flexible material adapted to conform to the interior
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surface of the main passageway around the lateral aperture for
forming an improved seal at the junction between the main pipeline
and the lateral, wherein the tube and the collar are both resin
impregnable.
‘114 patent, Col. 4, L. 39–48 (emphasis added).
As to “resin impregnated material,” the phrase is similar to “resin absorbable flexible
material” because the ‘832 patent claims the method for installing a liner similar to the type claimed
in the ‘114 patent. Thus, once a liner of the type claimed in the ‘114 patent is ready for installation,
the “resin absorbable flexible material” is impregnated with resin before installation. In this regard,
the ‘832 patent claims a method comprising of “a resin impregnated lateral lining tube of finite
length and open ended having at one end a collar of resin impregnated material with a central
opening.” ‘832 Patent, Col. 4, L. 46–55 (emphasis added).
III. LEGAL STANDARD
Claim construction is a matter of law for the Court. Markman v. Westview Instruments, Inc.,
52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996). In construing the terms of
a patent claim, the court examines the intrinsic evidence, consisting of the claims themselves, the
specification of the patent, and the prosecution history. Vitronics Corp. v. Conceptronic, Inc., 90
F.3d 1576, 1582 (Fed .Cir. 1996) (citations omitted). First, the Court examines the “words of the
claims themselves, both asserted and nonasserted, to define the scope of the patented invention.”
Id. The words of a claim “are generally given their ordinary and customary meaning.” Id. The
ordinary and customary meaning of the words of a claim are “what one of ordinary skill in the art
at the time of the invention would have understood [them] to mean.” Markman, 53 F.3d at 986.
There is a “‘heavy presumption’” that claim terms carry their ordinary meaning as viewed by one
of ordinary skill in the art. W.E. Hall Co. v. Atlanta Corrugating, LLC, 370 F.3d 1343, 1350 (Fed.
9

Cir. 2004) (quoting Johnson Worldwide Assocs., v. Zebco Corp., 175 F.3d 985, 989 (Fed. Cir.
1999)).
Second, the Court reviews “the specification to determine whether the inventor has used any
terms in a manner inconsistent with their ordinary meaning.” Vitronics, 90 F.3d at 1582. The
specification “is dispositive; it is the single best guide to the meaning of a disputed term.” The
specification may reveal “an intentional disclaimer, or disavowal, of claim scope by the inventor.”
Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005). Such intentional disclaimer or
disavowal must indicate “a clear and unmistakable intent to limit claim scope in order to overcome
ordinary meaning and narrow a claim.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906
(Fed. Cir. 2004).
Third, the court “also consider[s] the prosecution history of the patent.” Vitronics, 90 F.3d
at 1582; see also Graham v. John Deere Co., 383 U.S. 1, 33 (1966) (“An invention is construed not
only in the light of the claims, but also with reference to the . . . prosecution history in the Patent
Office.”). The prosecution history, however, lacks the clarity of the specification and the claims
because it represents an ongoing negotiation between the PTO and the patent applicant. Phillips,
415 F.3d at 1317. Nonetheless, similar to the specification, the patent applicant may make an
intentional disclaimer, or disavowal, of claim scope of a given term during this negotiation, thus
narrowing the meaning of such terms. Id. (citing Vitronics, 90 F.3d at 1582–83) (citations omitted).
Aside from the intrinsic evidence, the court may review extrinsic evidence. Id. Extrinsic
evidence “‘consists of all evidence external to the patent and prosecution history, including expert
and inventor testimony, dictionaries, and learned treatises.’” Id. at 1318 (citing Markman, 52 F.3d
at 980) (citations omitted). Extrinsic evidence, however, “is unlikely to result in a reliable

10

interpretation of patent claim scope unless considered in the context of the intrinsic evidence.” Id.
at 1319. Thus, a claim term must be given its ordinary meaning unless the patent applicant redefined
the term in the specification or made a clear disavowal of the claim scope of a given term in the
intrinsic record. Teleflex, Inc. v. Ficosa North America, 299 F.3d 1313, 1327 (Fed. Cir. 2002). With
these principles in mind, the Court considers the disputed claim phrases.
IV. ANALYSIS
A. RESIN ABSORBABLE FLEXIBLE MATERIAL
The phrase “resin absorbable flexible material” is used in each claim to describe the lining
tube and collar. As to the lining tube, Claim 1 reads, “a lining tube of resin absorbable flexible
material found with a lumen.” As to the collar, Claim 1 reads, “having a collar of resin absorbable
flexible material.” Claims 4, 5, and 6 contain the same language as Claim 1 with respect to
describing the lining tube and the collar.
Defendant proposes two constructions of “resin absorbable flexible material” for the Court
to consider: (1) a “material including only resin absorbent material,” or (2) a material that is not “any
material which would be relatively resilient, or that would be non-impregnable.” Defendant argues
that these are the proper constructions of the disputed phrase because Plaintiffs made a clear
disavowal of any additional elements during the original prosecution and reexamination proceedings
of the ‘114 patent. Specifically, Defendant relies on Plaintiffs’ representations to the PTO
Examiners when distinguishing the ‘114 patent’s liner and collar from the prior art, including the
Long Patent and the Wakagi ‘325 patent.
In response, Plaintiffs read the phrase “as a material capable of being impregnated with resin
such that the resin substantially fills the voids of the material while the material remains sufficiently

11

pliable such that it is capable of being stretched or deformed.” According to Plaintiffs’ construction,
the phrase does not exclude an additional element, such as an envelope or film to hold the resin in
the material. Plaintiffs argue, despite Defendant’s cited excerpts from the prosecution history, that
the patent specification and prosecution history support their interpretation.5 Plaintiffs conclude that
the specification makes clear that the lining tube and the collar are comprised of more than resin
absorbable material, as the “sealed envelope” ensures that the resin does not leak out of the material.
Plaintiffs further point out that the prior art cited in the ‘114 patent’s specification indicates that to
impregnate the resin into the material, a film is applied to the material to ensure the resin does not
leak out. Plaintiffs also insist that because the claims use open-ended claim language (i.e.,
“comprising” or “consisting essentially of”), that Plaintiffs were not required to claim components
that do not materially affect the basic and novel properties of the invention, such as an envelope or
film to stop the resin from leaking out of the material.
The Court adopts Plaintiffs’ construction as it is supported by the claims, specification, and
prosecution history. As to the claims themselves, in reviewing Claim 1, no language limits the
“resin absorbable flexible material” to only resin absorbable flexible material. A reading of Claim
1 states that a “liner” is constructed of a “tube” with a “collar” portion, and both the “tube” and the
“collar” are of “resin absorbable flexible material.” Claim 1 further reads that the “tube” and the
“collar” are “both resin impregnable.” Claim 1 contains no words expressly excluding the use of
a film or envelope as an element used to make the “resin absorbable flexible material.”
Furthermore, the words of Claim 1, also representative of the other independent claims in

5

The portion specifically relied on by Plaintiffs reads “the lining tube . . . has a collar . . . which is
preferably a sealed envelope containing a resin absorbent material which is impregnated with
curable synthetic resin similar to the tube itself.” ‘114 patent, Col. 4, L. 28–33.
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the ‘114 patent, include the transition phrase “comprising.” When a claim uses an “open” transition
phrase, such as “comprising”, its scope may cover devices that employ additional, unrecited
elements. See Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1271 (Fed. Cir. 1986); Elkay
Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 977 (Fed. Cir. 1999). This transition phrase in the ‘114
patent is an “open” transition, and thus, the claim may cover additional materials that are not recited
in the claims. See id. In reading the claims in light of the specification and the prior art cited
therein, a person of ordinary skill in the art would understand that a film or envelope has been used
with resin impregnated material to stop the resin from leaking out of the material during installation.
Thus, the ordinary and customary meaning of the phrase in Claim 1 supports Plaintiffs’ construction
because an envelope or film is a basic unrecited element known to those skilled in the art. Neither
party has provided sufficient evidence that an envelope incorporated into the resin absorbable
flexible material would prohibit the material from being “flexible” or “resin absorbable”.
As to the specification, it also supports Plaintiffs’ construction. It contains no language
expressly defining the phrase or limiting the meaning of “resin absorbable flexible material,” thus
the ordinary and customary meaning controls. See Johnson Worldwide Assoc., Inc. v. Zebco Corp.,
175 F.3d 985 (Fed. Cir. 1999). As Plaintiffs also point out to the Court, a preferred embodiment is
described in the specification as including an envelope with a resin absorbent material, explaining
the preferred embodiment as “the lining tube . . . has a collar . . . which is preferably a sealed
envelope containing a resin absorbent material which is impregnated with curable synthetic resin
similar to the tube itself.” ‘114 patent, Col. 4, L. 28–33 (emphasis added). Aside from the Federal
Circuit’s rejection of limiting patent claims to the preferred embodiment in the specification,
Liebel-Flarsheim Co., 358 F.3d at 906, if this Court were to limit Claim 1 to the preferred

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embodiment, such an improper construction would still find that “resin absorbable flexible material”
includes the use of a film or envelope. Therefore, logically construing the claim so that it is not
limited by the preferred embodiment in the specification informs the meaning of the phrase “resin
absorbable flexible material” to include, but not be limited to, incorporating a film or envelope.
Moreover, there is no evidence that one skilled in the art would find “resin absorbable
flexible material” to mean a resin absorbable material that excludes the use of an envelope, or
similar element, to retain the resin in the material. The specification itself cites to Great Britain
Patent Nos. 1340068 and 1449455. Both patents teach the use of a liner with a “laminate” or an
envelope surrounding a fibrous material, and similar to the ‘114 and ‘832 patents, these liners are
used for curing main pipelines or lateral pipes. See GB Pat. No. 1340068, at 2:15–35 (explaining
“a flexible laminate comprising a membrane which . . . is impregnated with an uncured synthetic
resin”); GB Pat. No. 1449455, at 1:55–61 (explaining “[t]he tube of absorbent material may be
flexible foam, felt and/or cloth which is wetted out with the resin, and surrounding the absorbent
tube is the liquid impermeable tube, which may be of synthetic plastics material such as
polyethylene or poly vinyl chloride”). As such, inclusion of an envelope or film on the liner is
known to those skilled in the art. Koito Mfg. Co., Ltd. v. Turn-Key-Tech, LLC, 381 F.3d 1142, 1156
(Fed. Cir. 2004) (“An inventor need not, however, explain every detail since he is speaking to those
skilled in the art.”) (internal citations omitted.). Because Plaintiffs were not required to describe
every element to one skilled in the art, the specification and prior art cited therein, support Plaintiffs’
construction.
As to the prosecution history, Defendant’s arguments for adopting its constructions heavily
rely on statements made by Plaintiffs’ representatives to the PTO while prosecuting the ‘114 patent.

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Defendant’s argument that the Examiner was not aware that a film was used in the prior art lacks
any merit in consideration of the Manual of Patent Examining Procedure, a manual that outlines the
procedures carried out by examiners of the PTO. In examining an application for patent, an
examiner must conduct a thorough search of the prior art, which includes identifying the field of
search (i.e., domestic or foreign patents), selecting the correct search tool (i.e., an automated search
of foreign patents), and determining an appropriate strategy for the search. MPEP § 904.02.
Defendant fails to provide any evidence that the Examiners failed to follow these procedures when
reviewing the ‘114 and ‘832 patents and that the Examiners were unaware of a film being used in
the prior art.
Defendant also asserts, despite the specification and claim language, Plaintiffs made a clear
disavowal of any additional material comprising “resin absorbable flexible material.” The Court
finds no support for Defendant’s interpretation or arguments in the prosecution history. Rather,
Defendant’s interpretation is too narrow, and it has not identified any words or statements that
indicate a clear intent by Plaintiffs’ representatives to exclude an envelope from the disputed phrase.
In sharp contrast to Defendant’s interpretation, Plaintiffs’ representatives even discussed with the
PTO Examiner a polymeric coating that held in the impregnated resin, stating:
In contrast [to the Long Patent], by bonding two similar materials
applicant can provide the polymeric coating or the felt layer on the
upper surface of the collar facing the tubular portion. This provides
a liner wherein the resin impregnated felt material is placed up
against the interior of the lateral and is also against the interior of the
main line during installation from the main line out into the lateral.
To the extent Plaintiffs’ representatives were differentiating the ‘114 patent from the Long
patent, the representatives did not make a clear disavowal of the use of a sealed envelope or other
additional basic elements. Rather, Plaintiffs’ representatives’ arguments to the PTO Examiner were
15

distinguishing the Long Patent’s ring from the ‘114 patent’s collar. See ‘114 patent at ITI 200
(explaining “Applicant has provided a flexible collar which is free of the resilient retaining ring of
the prior art,” and the claim language “is sufficient to exclude stiffening members such as the
retaining ring of Long”).6
After reviewing Defendant’s cited excerpts from the reexamination proceedings, the Court
reaches the same conclusion that a clear intent to limit the claim scope is lacking. To the extent that
Plaintiffs were overcoming the PTO’s rejection based on the Wakagi patents during the
reexamination proceedings, again no statements made by Mr. Osborn in his declaration submitted
to the PTO make a clear disavowal of an envelope or film. SanDisk v. Memorex Prods. Inc., 415
F.3d 1278, 1287 (Fed. Cir. 2005) (“There is no ‘clear and unmistakable’ disclaimer if a prosecution
argument is subject to more than one reasonable interpretation, one of which is consistent with a
proffered meaning of the disputed term.”). Mr. Osborn’s declaration fails to indicate that if an
envelope were present in the ‘114 patent, the collar claimed in the patent would fail to stretch and
form to the main pipeline. Rather, he was pointing out to the examiner that the liner and film in the
Wakagi ‘325 Patent could not be stretched to form the collar claimed in the ‘114 patent. As such,
Defendant has failed to show that Plaintiffs disclaimed the presence of other materials in the liner
during prosecution of the patent and reexamination of the patent.
Accordingly, the Court will adopt Plaintiffs’ proposed interpretation, namely that the phrase
“resin absorbable flexible material” means “a material capable of being impregnated with resin such
that the resin substantially fills the voids of the material while the material remains sufficiently

6

Defendant makes no argument nor points to any statements in the record that excluding “stiffening
members,” as stated in the prosecution history, would exclude a film or envelope in the ordinary and
customary meaning of “resin absorbable flexible material.”
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pliable such that it is capable of being stretched or deformed.”
B. RESIN IMPREGNATED MATERIAL
The phrase “resin impregnated material” is found in Claims 1, 6, 17, and 18 of the ‘832
patent. The phrase is used in each claim to describe the collar, and similar terms are used to describe
the lining tube. Claims 6, 17, and 18 contain the same language as Claim 1 with respect to
describing the lining tube and the collar. As to the lining tube, Claim 1 reads, “a resin impregnated
lateral lining tube.” As to the collar, Claim 1 reads, “a collar of resin impregnated material.” After
review of the claims in the ‘832 patent, the Court need not conduct any further analysis than the
analysis conducted supra with regard to the phrase “resin absorbable flexible material.” As one of
ordinary skill in the art would understand, the ‘832 patent claims the method for installing an
invention similar to the type claimed in the ‘114 patent. The only difference that is clear in the ‘832
patent is that for installation, the “resin absorbable flexible material” must be impregnated with
resin, at which point it is referred to as “resin impregnated material.” For this reason, the Court
finds that “resin impregnated material” means “a material impregnated with resin such that the resin
substantially fills the voids of the material while the material remains sufficiently pliable such that
it is capable of being stretched or deformed.”
V. CONCLUSION
Accordingly, for the reasons set forth above, IT IS HEREBY ORDERED that the phrase
“resin absorbable flexible material” in the ‘114 patent means “a material capable of being
impregnated with resin such that the resin substantially fills the voids of the material while the
material remains sufficiently pliable such that it is capable of being stretched or deformed.”
IT IS FURTHERED ORDERED that the phrase “resin impregnated material” in the ‘832

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patent means “a material impregnated with resin such that the resin substantially fills the voids of
the material while the material remains sufficiently pliable such that it is capable of being stretched
or deformed.”
IT IS SO ORDERED.
S/Lawrence P. Zatkoff
LAWRENCE P. ZATKOFF
UNITED STATES DISTRICT JUDGE
Dated: August 1, 2011
CERTIFICATE OF SERVICE
The undersigned certifies that a copy of this Order was served upon the attorneys of
record by electronic or U.S. mail on August 1, 2011.

S/Marie E. Verlinde
Case Manager
[phone]

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