Mixing & Mass Transfer Technologies, LLC v. HDR Engineering, Inc. et al

Filing 118

MEMORANDUM AND ORDER- Filing 109 , Plaintiffs' Rule 56(d) motion to deny as premature, or in the alternative, continue Defendants' motion for summary judgment, is denied in all respects. Filing 98 , Defendants' motion for summary judgment of invalidity and non-infringement of U.S. Patent No. 5,811,009, is granted in part and denied in part, as follows: a. The motion is granted to the limited extent that the court hereby dismisses Plaintiffs claims with prejudice and declares that the Theresa Street Wastewater Treatment Facility does not infringe elements (b) and (d) of Claim 18 of the 009 Patent. b. In all other respects, the motion is denied. This matter is referred to Magistrate Judge Cheryl R. Zwart for further progression, as appropriate. Ordered by Senior Judge Richard G. Kopf. (MKR)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEBRASKA

MIXING & MASS TRANSFER
TECHNOLOGIES, LLC,
and PETER KOS, Ph.D.,
Plaintiffs,
v.
CITY OF LINCOLN, NEBRASKA,
and HDR ENGINEERING, INC.,
Defendants.

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4:11CV3068

MEMORANDUM
AND ORDER

Defendants, the City of Lincoln, Nebraska, and HDR Engineering, Inc., have
moved for “summary judgment of invalidity and non-infringement of U.S. Patent No.
5,811,009 (the ‘’009 Patent’),” which is owned by Peter Kos, Ph.D., and licensed
(by assignment) to Mixing & Mass Transfer Technologies, LLC (collectively,
“Plaintiffs”). The motion will be denied with respect to Defendants’ claim that the
’009 Patent is invalid, but will be granted on the basis of non-infringement.
I. Introduction
Contending that the motion for summary judgment is premature, Plaintiffs have
filed a motion requesting the court either to deny summary judgment or to grant a
continuance. Plaintiffs’ motion, which is made pursuant to Federal Rule of Civil
Procedure 56(d), will be denied in all respects.
Rule 56(d) provides that “[i]f a nonmovant shows by affidavit or declaration
that, for specified reasons, it cannot present facts essential to justify its opposition [to
a motion for summary judgment], the court may: (1) defer considering the motion or

deny it; (2) allow time to obtain affidavits or declarations or to take discovery; or (3)
issue any other appropriate order.” Fed. R. Civ. P. 56(d) (emphasis supplied). In the
absence of an affidavit or declaration showing what specific facts further discovery
might uncover, a district court generally does not abuse its discretion in denying a
motion for continuance and granting summary judgment on the basis of the record
before it. See Nolan v. Thompson, 521 F.3d 983, 986-87 (8th Cir. 2008); see also
Johnson v. United States, 534 F.3d 958, 965 (8th Cir. 2008) (Rule 56(d) affidavit
should describe: “(1) what facts are sought and how they are to be obtained; (2) how
these facts are reasonably expected to raise a genuine issue of material fact; (3) what
efforts the affiant has made to obtain them; and (4) why the affiant’s efforts were
unsuccessful.”).
Plaintiffs’ counsel, Shawna M. Bligh,1 states the following in an affidavit
executed on June 21, 2013:2
1.
I am above the age of 18 and am counsel for Plaintiffs,
Mixing & Mass Transfer Technologies, LLC and Peter Kos, Ph.D. in the
above-captioned case.
2.
Defendants assert a number of affirmative defenses to
Plaintiffs’ Second Amended Complaint, including:

1

Ms. Bligh entered her appearance in this action on January 28, 2013,
following the withdrawal of Plaintiffs’ original counsel (filings 83, 85).
2

The affidavit is attached to a brief (filing 110) filed in support of Plaintiffs’
Rule 56(d) motion. Although such filing is procedurally improper under NECivR
7.1(b)(2)(B) (“Evidentiary materials may be attached to the brief if the brief includes
a listing of each item of evidence being filed, and the evidence citations within the
brief provide hyperlinks to the evidence attached and offered in support of the factual
statements. In all other cases, evidentiary materials may not be attached to the brief
but rather must be filed separately with an index listing each item of evidence being
filed and identifying the motion to which it relates.”), the affidavit will be considered.
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a.
b.
c.
d.

e.
f.
g.

The existence of prior art, which would render the
’009 Patent invalid or unenforceable.
Plaintiffs[’] claims are barred by the doctrine of
laches.
Defendants are not infringing on the ’009 Patent.
The ’009 Patent is invalid because the alleged
inventions therein were known and/or used by others
and/or for anticipation under 35 U.S.C. § 102.
The ’009 Patent is invalid for obviousness under 35
U.S.C. § 103.
The ’009 Patent is invalid for failure to comply with
the requirements of 35 U.S.C. § 112.
The ’009 Patent does not otherwise meet one or
more requirement of Title 35 of the United States
Code.

3.
Defendants assert two counterclaims, including a
Declaration of Non-Infringement and a Declaration of Invalidity.
4.
Plaintiffs have served their First Requests for Production of
Documents, First Interrogatories and First Requests for Admissions on
Defendants. Defendants still have time remaining under which to answer
or respond to these discovery requests. Notwithstanding this, however,
Plaintiffs have received no responses or answers to these requests.
5.
Plaintiffs also seek to potentially depose Dr. Glen Draigger
of CH2M-Hill, as well as representatives of HDR Engineering, Inc. and
the City of Lincoln, Nebraska regarding certain statements made
respecting the ’009 Patent and potential infringement of same.
6.
This information is important because it goes directly to
Plaintiffs’ claims of infringement, as well as Defendants[’] affirmative
defenses and counterclaims.
7.
Defendants’ Motion for Summary Judgment on Invalidity
and Non-Infringement argues that the uncontroverted facts prove that
Defendants are not infringing the ’009 Patent or that the ’009 Patent is
invalid.
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8.
Importantly, Plaintiffs lack evidence to rebut or otherwise
respond to Defendants’ purported uncontroverted facts[,] or such facts
cannot be presented[,] that they are not infringing the ’009 Patent or that
the ’009 Patent is invalid, at this time, as Plaintiffs need further
discovery pursuant to Fed. R. Civ. P. 56(d).
(Filing 110-1).
In paragraph 2 of her affidavit, counsel has listed seven affirmative defenses
that are alleged in Defendants’ answer. However, the pending motion for summary
judgment touches upon only two of those defenses. That is, Defendants argue: (1)
there is no infringement; and (2) the patent is indefinite and therefore invalid under
35 U.S.C. § 112. More specifically, Defendants (1) deny infringement because their
wastewater treatment facility (a) does not return a portion of the settled sludge from
the final clarifier to the mainstream treatment process, as required by element (b) of
Claim 18 of the ’009 Patent, and (b) does not transfer any supplemental nitrifiers from
the sidestream nitrification system to the mainstream nitrification process, as required
by element (d) of Claim 18 of the ’009 Patent; and (2) argue indefiniteness because
Plaintiffs, in responding to a request for admission, allegedly objected that a phrase
which is used in the preamble to Claim 18 of the ’009 Patent to describe the invention,
i.e., “activated sludge biological wastewater treatment process,” is nonsensical.
Similarly, while it is true that Defendants have counterclaimed, they are seeking
only limited declaratory relief in connection with the pending motion for summary
judgment. Defendants are only requesting a declaration of non-infringement and a
declaration of invalidity, for the specific reasons outlined above.
The affidavit of Plaintiffs’ counsel fails to identify any relevant facts that
Plaintiffs hope to learn through discovery. She merely expresses a desire to depose
“Dr. Glen Draigger of CH2M-Hill, as well as representatives of HDR Engineering,
Inc. and the City of Lincoln, Nebraska regarding certain statements made respecting
the ’009 Patent and potential infringement of same.”
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It is claimed in Plaintiffs’ supporting brief (1) that “[r]epresentatives of HDR
and the City authored an paper entitled ‘Prenitrification and Seeding for Enhanced
Nitrification’” that “proposed a method of treatment to be utilized as part of the design
and reconstruction at the Theresa Street Wastewater Treatment Plant”; (2) that “[t]his
paper was the basis of a presentation by HDR and the City at a Water Environment
Federation Conference in November 2004”; (3) that “[f]ollowing the presentation,
Dr. Glen Daigger [sic] of CH2M-Hill approached representatives of HDR and the
City” and “informed these representatives that the method or process of wastewater
treatment that was intended to be used at the Theresa Street Wastewater Treatment
Facility was patented technology, specifically, that the process or method was
protected under the ’009 Patent”; (4) that “representatives of HDR and the City were
so concerned about possible infringement that they contacted the owner and exclusive
licensee of the ’009 Patent, Dr. Peter Kos . . . and Mixing & Mass Transfer
Technologies, LLC (“M2T”)”; (5) that “representatives of HDR and M2T met at the
Omaha office of HDR on August 24, 2006, to discuss the ’009 [P]atent”; (6) that
“[a]nother meeting between representatives of HDR, the City and M2T occurred on
May 6, 2008, at the Theresa Street Wastewater Treatment Facility to discuss the ’009
Patent;”; (7) that “[d]uring the meeting of May 6, 2008, representatives of HDR
admitted that what was presented in the paper entitled ‘Prenitrification and Seeding
for Enhanced Nitrification’ was what was actually intended in the design and actual
reconstruction of the Theresa Street Wastewater Treatment Facility”; and (8) that
“[w]hile representatives of HDR indicated that they could change the operation of the
Theresa Street Wastewater Treatment Facility so that the design and reconstruction
would not infringe the ’009 Patent, representatives of the City rejected HDR’s
proposed changes to the operation, opting instead to proceed with the design and
reconstruction as set forth in the paper” (filing 110 at CM/ECF 2-3).
Even though Plaintiffs should have first-hand knowledge of facts (4) through
(8) listed above, no admissible evidence has been presented by them to establish the

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truth of any of these facts.3 Nor have Plaintiffs shown by affidavit or declaration that
evidentiary support might be obtained through discovery. Defendants, on the other
hand, have presented evidence that the Theresa Street Wastewater Treatment Facility
does not operate in the manner described in the “Prenitrification and Seeding for
Enhanced Nitrification” paper. Ron Sova, a HDR representative, has declared under
penalty of perjury that he presented the paper at the 2004 conference, that the paper
was merely a proposal, and that since start-up the Theresa Street Facility has not
utilized a return activated sludge line as depicted in the paper (and described in Claim
18(b)); rather, all settled sludge in the final clarifier has either been sent to a
“prenitrification basin” or else been disposed of (filing 100-2, ¶¶ 13, 15, 16). Mr.
Sova has also declared that the paper, which itself is in the record as Defendants’
Exhibit 1 (filing 100-1), differs from Claim 18(d) of the ’009 Patent because it depicts
a process where the transfer of supplemental nitrifiers is made to the “mainstream inlet
line” and not the “mainstream nitrification process” (filing 100-2, ¶ 17). On the record
presented, it does not appear that granting Plaintiffs a continuance to depose Dr.
Draigger4 and Defendants’ representatives would be productive.
Ms. Bligh indicates in paragraph 4 of her affidavit that Defendants have not
responded to certain requests for production of documents, interrogatories, and
requests for admissions. However, these discovery requests were not served until
June 3, 2013 (filing 104), and June 18, 2013 (filing 108), 2-4 weeks after Defendants

3

Defendants’ evidence generally establishes the first two facts but shows the
conference was held in October 2004. See Defendants’ Exhibit 1 (filing 100-1);
Declaration of Ron Sova dated May 17, 2013, ¶ 13 (filing 100-2 at CM/ECF 3). Mr.
Sova has also declared that the meeting at the Theresa Street Facility took place on
August 24, 2006 (instead of May 6, 2008), and that to the best of his knowledge, “this
is the only time that anyone representing m2t has been to the Theresa Street Facility.”
Declaration of Ron Sova dated May 31, 2013, ¶ 2 (filing 103-1 at CM/ECF 1). He
adds that “m2t was told repeatedly at this meeting that the Theresa Street Facility did
not infringe the claims of their ’009 Patent.” Id., ¶ 4 (filing 103-1 at CM/ECF 1).
4

Dr. Draigger’s purported statement appears irrelevant in any event.
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filed their motion for summary judgment.5 Defendants had previously filed a motion
to stay discovery, which I granted on July 17, 2013 (filing 116). Counsel’s affidavit,
including the conclusory statement in paragraph 8 regarding Plaintiffs’ lack of
evidence and need for discovery, does not provide good cause for lifting the stay.
While it has been stated that Rule 56(d) “should be applied with a spirit of
liberality,” Jacobs v. PT Holdings, Inc., No. 8:11CV106, 2012 WL 705772, *2
(D.Neb. Mar. 2, 2012) (quoting United States ex. rel. Bernard Casino Magic Corp.,
293 F.3d 419, 426 (8th Cir. 2002)), it “is not a shield that can be raised to block a
motion for summary judgment without even the slightest showing by the opposing
party that his opposition is meritorious.” Id. (quoting Wilmar Poultry Co. v. MortonNorwich Prods., Inc., 520 F.2d 289, 297 (8th Cir. 1975)). Because Plaintiffs have
failed to meet the low burden of proof required by Rule 56(d), their motion will be
denied in all respects.
II. Undisputed Facts
Under our local rules, a party moving for summary judgment “must include in
the brief in support of the summary judgment motion a separate statement of material
facts about which the moving party contends there is no genuine issue to be tried and
that entitles the moving party to judgment as a matter of law.” NECivR 56.1(a)(1).
“The party opposing a summary judgment motion must include in its brief a concise
response to the moving party’s statement of material facts.” NECivR 56.1(b)(1).
“Properly referenced material facts in the movant’s statement are considered admitted
unless controverted in the opposing party’s response.” Id. See also Fed. R. Civ. P.
56(e)(2), (3) (“If a party . . . fails to properly address another party’s assertion of fact
as required by Rule 56(c), the court may . . . consider the fact undisputed for purposes

5

As will be detailed below, Plaintiffs were offered the opportunity to tour the
Theresa Street Facility in December 2012 and March 2013 to verify that the facility
operates in the manner described by Defendants, but the offers were not accepted.
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of the motion . . . [and] grant summary judgment if the motion and supporting
materials—including the facts considered undisputed—show that the movant is
entitled to it[.]”).
Because Plaintiffs have failed to respond to Defendants’ motion for summary
judgment, except by filing a non-meritorious Rule 56(d) motion, the statement of
material facts that is set forth in Defendants’ supporting brief is deemed admitted
(except as otherwise indicated below). The statement reads:
1.
Plaintiff Mixing & Mass Transfer Technologies, LLC is a
limited liability corporation organized and existing under the laws of the
Commonwealth of Pennsylvania, with its principal place of business at
141 Blackberry Lane, Boalsburg, Pennsylvania. (ECF 26, 2d Am.
Compl., ¶2; ECF 27, Answer and Countercl., ¶2).
2.
Plaintiff Peter Kos, Ph.D. (“Dr. Kos”) is the inventor of
United States Patent No. 5,811,009 (the “’009 Patent”) entitled: “Method
and System for Improved Biological Nitrification of Wastewater.” (Id.
at ¶¶3).
3.
Defendant HDR Engineering, Inc. is engaged in the
business of providing architectural, engineering, and consulting services,
with its principal place of business at 8404 Indian Hills Drive, Omaha,
Nebraska. (Id. at ¶¶4).
4.
Defendant City of Lincoln is a municipality located within
the County of Lancaster, Nebraska. (Id. at ¶¶5).
5.
This action arises out of the Second Amended Complaint
filed by Plaintiffs Mixing & Mass Transfer Technologies, LLC and Peter
Kos, Ph.D. (collectively “m2t”) against HDR and the City of Lincoln,
Nebraska (collectively “HDR”) with allegations of patent infringement
of the ’009 Patent. (ECF 26, 2d Am. Compl.).
6.
HDR’s Answer and Counterclaim contains allegations of
non-infringement and invalidity of the ’009 Patent. (ECF 27, Answer and
Countercl.).
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7.
This Court has subject matter jurisdiction pursuant to 28
U.S.C. §§ 1331 and 1338. (ECF 26, 2d Am. Compl., ¶6; ECF 27,
Answer and Countercl., ¶6).6
8.
The parties agree that the District of Nebraska is the proper
venue for this action under 28 U.S.C. § 1400(b). (Id. at ¶¶7).
9.
This Court conducted a Markman7 hearing and entered its
claim construction ruling on November 8, 2012. (ECF 80, Markman
Order).
10. Plaintiffs accuse HDR’s Theresa Street Facility of
infringing Claim 18 of the ’009 Patent. No other claim of the ’009 Patent
is being asserted. (Id. at 1).8
11. After entry of the Markman Order, HDR notified m2t and
its counsel that given the construction of claim terms, the accused
Theresa Street Facility does not infringe any claims of the ’009 Patent.
(ECF 95-1, Ex. 1, 12/13/12 Letter from Peterson to Novak and Jeffries
re: Facility Tour).
12. Counsel for HDR offered Plaintiffs’ counsel a tour of the
Theresa Street Facility in order to substantiate HDR’s non-infringement
claims. (Id.). The tour was scheduled for December 17, 2012 (id.), but
was cancelled by prior counsel, who abruptly withdrew representation
on December 27, 2012. (ECF 82, Mot. to Withdraw).

6

This is a legal conclusion. However, the court finds it has subject matter
jurisdiction because the action arises under federal patent law.
7

Markman v. Westview Instruments, Inc., 517 U.S. 370, 373 (1996) (holding
that claim construction is a matter of law for the court).
8

The ’009 Patent contains three independent claims (1, 11, and 18), but “[i]n
this case, Plaintiffs [only] contend that Defendants have infringed claim 18”
(Plaintiffs’ Opening Claim Construction Brief (filing 57) at CM/ECF 13).
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13. After former counsel withdrew, counsel for HDR invited
m t and its present counsel to inspect the Theresa Street Facility to verify
the methods of its operations and consequential non-infringement under
the Court’s claim construction. (ECF 95-2, Ex. 2, 01/02/13 Rule 11
Letter and Motion from Peterson to m2t Principal and Dr. Kos; ECF 953, Ex. 3, 03/18/13 Email from Peterson to Bligh providing copy of Rule
11 Letter; ECF 95-4, Ex. 4, 03/26/13 Letter from Peterson to Bligh re:
Facility Tour).
2

14. m2t’s present counsel ignored HDR’s invitation to visit the
Theresa Street Facility and compare the method of its operation to the
claims of the ’009 Patent.9
15. HDR then served Requests for Admissions, each utilizing
excerpts from Claim 18, including those terms which the Court spent
substantial time defining. (ECF 95-5, Ex. 5, Pls.’ Resps. to Reqs. for
Admissions).
16. The Requests for Admissions illustrate that the accused
Theresa Street Facility does not infringe Claim 1810 as it neither:

9

No evidence is cited in support of this statement. In an email dated June 3,
2013, Plaintiffs’ counsel indicated that her clients felt there was no need to tour the
facility (filing 103-3 at CM/ECF 2).
10

Plaintiffs are not deemed to have admitted the legal conclusion that “the
accused Theresa Street Facility does not infringe Claim 18,” nor are they deemed to
have admitted Defendants’ characterization that the requests for admission “illustrate”
non-infringement or establish either bullet-point statement of fact. Plaintiffs denied
a request to “[a]dmit that the Theresa Street Facility does not return any portion of the
settled sludge from the final clarifier to the mainstream treatment process,” stating:
“Upon information and belief, most of the settled sludge from the final clarifiers at the
Theresa Street Facility is returned to the mainstream treatment process.” (Filing 95-5
at CM/ECF 2, Response to Request for Admission No. 4). Plaintiffs also denied a
request to “[a]dmit that the supplemental biological nitrifiers produced in the
sidestream biological nitrification system at the Theresa Street Facility are not
transferred to the mainstream nitrification process,” stating: “The nitrifiers produced
in the sidestream nitrification process at the Theresa Street Facility are transferred to
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•
returns any portion of the settled sludge from the
final clarifier to the mainstream treatment process (as required by
Claim 18(b)); nor
•
transfers the supplemental nitrifiers from the
sidestream nitrification process to the mainstream nitrification
process (as required by Claim 18(d)).
(Id. at Resp. Nos. 4, 8, & 11).
17. m2t objected to virtually all the Requests for Admissions as
“vague and ambiguous,” even though the requests cited Claim 18
verbatim. (Id. at Resp. Nos. 7, 8, 9, 10, 12, 13, 14 & 15). m2t also stated
that the preamble to every claim of the ’009 Patent which requires “an
activated sludge biological wastewater treatment process…:” “Does not
make sense.” (Id. at Resp. No. 3).11
18. HDR also propounded Interrogatories upon m2t. In response
to Interrogatory No. 7 requesting Plaintiffs [to] set forth in detail how
they believe the Theresa Street Facility infringes Claim 18, m2t did not
respond with the customary claim charts or a written analysis comparing
the Theresa Street Facility methods to Claim 18 but rather responded:
ANSWER TO NO. 7. The Theresa Street Facility designed
by HDR Engineering, Inc. for the City of Lincoln,
Nebraska utilizes wastewater treatment processes that
perform each limitation of Claim 18 of the ’009 Patent or

the mainstream biological process, which includes the mainstream nitrification
process.” (Filing 95-5 at CM/ECF 3, Response to Request for Admission No. 11).
11

The cited evidence does not support Defendants’ second statement of fact in
paragraph 17. The evidence instead shows Plaintiffs were asked to admit that they
“are accusing the Theresa Street Facility of being an activated sludge biological
wastewater treatment process,” to which they responded: “Plaintiffs object to Request
No. 3 because it does not make sense and as such is not capable of being admitted or
denied. The Theresa Street Facility is not a ‘process.’ The Theresa Street Facility is
a wastewater treatment plant.” (Filing 95-5 at CM/ECF 1)
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an equivalent of each limitation of Claim 18. Plaintiffs
would direct Defendants to the WEFTEC paper entitled
“Prenitrification and Seeding for Enhanced Nitrification”
and to other documents already produced in the course of
this litigation.
(ECF 95-6, Pls.’ Answers to Interrogs. at 3-4).
19. HDR presented a paper at the WEFTEC Conference
concerning a proposal for the Theresa Street Facility entitled
“Prenitrification and Seeding for Enhanced Nitrification” (the “White
Paper”) on or about October 4, 2004. (Ex. 1 [(filing 100-1)], White
Paper). The presentation and the White Paper predated the construction
of the accused portion of the Theresa Street Facility. The White Paper
expressly identifies it as a “proposed” concept. (Ex. 1, White Paper at 1).
20. HDR Engineer Ron Sova testifies that the Theresa Street
Facility does not operate in the manner depicted in the White Paper.
Particularly, no portion of the settled sludge from the final clarifier is
returned to the mainstream treatment process as required by element
18(b). Rather, the settled sludge from the final clarifier is sent to the
sidestream nitrification process or disposed. Additionally, any
supplemental nitrifiers produced in the sidestream nitrification process
at the Theresa Street Facility are transferred to the mainstream inlet line
and not to the mainstream nitrification process as required by element
18(d). (Ex. 2 [(filing 100-2)], Decl. of Ron Sova at ¶¶4, 5, 6, 8 & 11).12
21. Even if the Theresa Street Facility operated as shown in the
White Paper (which it does not), it still does not infringe Claim 18 of the
’009 Patent:13

12

While paragraph 20 of Defendants’ statement of material facts accurately
reflects Mr. Sova’s affidavit testimony, and Plaintiffs are deemed to have admitted
that Mr. Sova has so testified, they are not deemed to have admitted the truth of the
facts stated by Mr. Sova.
13

Again, Plaintiffs are not deemed to have admitted the legal conclusion that
“the Theresa Street facility . . . does not infringe Claim 18 of the ’009 Patent.”
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a.
The White Paper does not depict a portion of the
settled sludge from the clarifier being returned to the “mainstream
treatment process” as required by 18(b). Rather, it depicts a
portion of the settled sludge being returned to the mainstream inlet
line—a portion of the mainstream distinct from the “mainstream
treatment process.” (Ex. 1, White Paper, Fig. 3, at 6).
b.
Nor does the White Paper depict the transfer of
supplemental nitrifiers from the “sidestream nitrification process”
to the “mainstream nitrification process” as required by element
18(d). Rather, the White Paper depicts a process where the
transfer of supplemental nitrifiers is made to the mainstream inlet
line and not the narrowly-construed “mainstream nitrification
process.” (Ex. 1, White Paper, Fig. 4, at 7).
22. m2t accused HDR of literal infringement and infringement
under the doctrine of equivalents. (ECF 26, 2d Am. Compl.).
23. HDR propounded Requests for Production upon m2t. In
response to Request No. 19 for all documents evidencing, supporting or
tending to support Plaintiffs’ contention that the Theresa Street Facility
meets, either literally or under the doctrine of equivalents, the limitations
of Claim 18, m2t responded by objecting to the term “doctrine of
equivalents” as “vague and ambiguous:”
RESPONSE TO NO. 19. Objection. Plaintiffs object to
this Request as vague and ambiguous as to “doctrine of
equivalents.” Plaintiffs further object to the extent that this
Request calls for a legal conclusion or requires Plaintiffs to
speculate as to the meaning of “doctrine of equivalents….”
(ECF 95-7, Pls.’ Resps. to Reqs. for Production of Documents at 10).
24.

m2t has propounded no discovery upon Defendants.14

(Filing 99 at CM/ECF 5-8) (hyperlinks added).
14

This statement is unsupported and, in any event, no longer true.
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III. The ’009 Patent
To better understand of the questions of law presented by Defendants’ motion
for summary judgment, it is necessary to review portions of the patent specification,
including the precise requirements of Claim 18.15 Attention must also be given to the
court’s construction of certain disputed terms and phrases that are used in Claim 18.
A. Overview
“The present invention entails a method and system for enhancing biological
nitrification in a wastewater treatment process” (’009 Patent, abstract (filing 58-2
at CM/ECF 1)). “[T]he nitrification step basically entails converting the ammonia
nitrogen, NH3–N, to nitrite or nitrate, both referred to as NOx.” (’009 Patent, 3:57-60
(filing 58-2 at CM/ECF 8)).
“[M]any conventional activated sludge wastewater treatment processes
accomplish nitrification in an aerobic or oxic treatment zone” where “the wastewater
containing the ammonia nitrogen is subjected to aeration and this gives rise to a
microorganism culture that effectively converts the ammonia nitrogen to NOx.” (id.).
The ’009 Patent utilizes this nitrification method. Thus, element (a) of Claim 18
specifies that the so-called “mainstream nitrification process” must include “at least

15

A patent application must include a specification that “contain[s] 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, . . . to make and use the same, . . ..” 35 U.S.C. § 112(a). The
specification must “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(b). “Generally speaking, an accused device must come within the
language of a claim to be an infringement thereof . . . because the patentee is entitled
to nothing beyond what he is allowed in his claims.” Criner v. Micro-Westco, Inc.,
139 F.2d 681, 683 (8th Cir. 1944).
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one aerobic treatment zone” (’009 Patent, 14:13-16 (filing 58-2 at CM/ECF 13)). It
is not disputed that the Theresa Street Facility meets this requirement.
Following treatment, the wastewater is transferred to a final clarifier (settling
tank). Element (b) of Claim 18 requires “returning at least a portion of the settled
sludge from the final clarifier to the mainstream treatment process.” (’009 Patent,
14:17-18 (filing 58-2 at CM/ECF 13)). This step is in dispute.
In addition to the mainstream nitrification process, the invention calls for a
“sidestream biological nitrification system” that “is operated at conditions which
maximize production of nitrifiers [i.e., nitrifying bacteria] therein” (’009 Patent,
abstract (filing 58-2 at CM/ECF 1)). This process is described in element (c) of Claim
18 (’009 Patent, 14:19-24 (filing 58-2 at CM/ECF 13)). It is not disputed that the
Theresa Street Facility has a sidestream biological nitrification system.
“Afterwards, the resulting nitrifiers produced in the sidestream nitrification
zone are directed into the mainstream where the nitrifiers function to enhance
nitrification in the mainstream and allows [sic] operation at low sludge retention time
conditions where nitrification otherwise1 could not be sustained” (’009 Patent,
abstract (filing 58-2 at CM/ECF 1)). Claim 18 (d) specifies that the nitrifiers are
transferred from the sidestream to the “mainstream nitrification process” (’009 Patent,
14:26-30 (filing 58-2 at CM/ECF 13)). Defendants contend that simply transferring
the nitrifiers to the mainstream, upstream from the “mainstream nitrification process,”
does not satisfy Claim 18(d).
“Normally, the process design for sludge age [i.e., average retention time] in a
conventional nitrification process calls for the sludge age to be designed to be at least
200% of the critical or minimum sludge age [for nitrification]” (’009 Patent, 2:50-53
(filing 58-2 at CM/ECF 7)). The present invention allows a wastewater treatment
system to be designed using a smaller safety factor because “the sidestream process
produces an abundant supply of supplemental nitrifiers that . . . assist[ ] in carrying
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out the nitrification process in the mainstream” (’009 Patent, abstract (filing 58-2 at
CM/ECF 1)). This improvement is reflected in element (e) of Claim 18. The pending
motion for summary judgment is not concerned with this element, which was the
subject of an earlier motion. See Memorandum and Order entered August 17, 2012
(filing 75).
Depicted below is “a schematic illustration of the enhanced biological
nitrification process and system of the present invention” (’009 Patent, 3:29-31
(filing 58-2 at CM/ECF 8)), which is identified in the ’009 Patent as Figure 1:

(’009 Patent, Figure 1 (filing 58-2 at CM/ECF 2)).
“[T]he biological nitrification process of the present invention is indicated
generally by the numeral 10” in Figure 1 (’009 Patent, 4:15-17 (filing 58-2 at
CM/ECF 8)) (boldface in original).
-16-

In this process influent wastewater is directed along a mainstream 12
through a mainstream biological treatment process 14. The mainstream
biological treatment process can include a series of various treatment
zones including one or more anaerobic zones, one or more aerobic (oxic)
zones, or one or more anoxic zones. However, it is contemplated that in
the present process, the mainstream biological treatment process 14
would include at least a nitrification zone for converting ammonia
nitrogen NH3—N to NOx. Basically, the mainstream biological treatment
area or zones 14 would produce a treated or purified effluent that could
be discharged into a creek, river, lake, etc.
(’009 Patent, 4:17-28 (filing 58-2 at CM/ECF 8)) (boldface in original). In addition
to the mainstream biological treatment area or zones, “the present invention entails a
sidestream nitrification system indicated generally by the numeral 16” (’009 Patent,
4:36-37 (filing 58-2 at CM/ECF 8)) (boldface in original).
Basically, the sidestream nitrification system 16 produces supplemental
nitrifiers that are conveyed or transferred to the mainstream 12 where the
supplemental nitrifiers aid or assist in the mainstream nitrification
process.
To produce the supplemental biological nitrifiers, the present
invention entails directing a sidestream 15 into a sidestream nitrification
zone or reactor 13. It is contemplated that the sidestream being fed or
directed into the sidestream nitrification zone 13 would have a relatively
high ammonia concentration compared to the ammonia concentration
found in the influent wastewater being directed into and through the
mainstream process.
(’009 Patent, 4:38-49 (filing 58-2 at CM/ECF 8)) (boldface in original).
Figure 2 of the ’009 Patent is “a schematic illustration of the enhanced
biological nitrification process and system of the present invention showing a
particular process and system design” (’009 Patent, 3:32-39 (filing 58-2 at CM/ECF
8)). It is depicted below:

-17-

(’009 Patent, Figure 2 (filing 58-2 at CM/ECF 3)). The patent specification describes
this particular process and system design in the following manner:
Now turning to FIG. 2 and the process shown therein, it is seen
that wastewater is directed into inlet line 50 which leads to a primary
clarifier 52. Primary clarifier 52 produces settled sludge and primary
clarifier effluent which is directed into a mainstream inlet line 54. From
inlet line 54 the primary clarifier supernatant is directed into a
mainstream treatment area or a series of mainstream treatment zones.
In the case of the present disclosure, the mainstream treatment area
includes at least one aeration tank 56. This of course is utilized for
mainstream nitrification. As pointed out above, it should be appreciated
that the mainstream treatment area could include any number of other
treatment zones such as anaerobic, aerobic, or anoxic. From the main
treatment area or the main treatment zone or zones, the treated
wastewater is directed through a secondary clarifier 60 that directs a
treated or purified effluent out outlet line 62. Separated sludge is directed
-18-

out the bottom of secondary clarifier 60 and a portion of it is returned to
the mainstream via a return activated sludge line 64. The return activated
sludge is mixed with the incoming influent wastewater in line 54 to form
a mixed liquor that is subsequently treated in the mainstream treatment
area or the mainstream treatment zone or zones (in this case the aeration
tank 56).
Some of the sludge directed from the secondary clarifier 60 is
referred to as excess activated sludge or waste sludge and that is directed
through line 68 to a digester 70 or another sludge stabilization process.
Also, primary sludge collected by the primary clarifier 52 is directed
into line 66 and into the digester 70. . . . Once the digestion process has
been completed the digested sludge is directed to a sludge dewatering
station 72. There the sludge is separated into dewatered sludge which is
directed out line 74 and dewatering liquid which is directed through line
76 to a sidestream nitrification system or zone 78. There the dewatering
liquid is subjected to nitrification and . . . would have a high
concentration of ammonia nitrogen and would typically be at an elevated
temperature compared to the influent wastewater passing through the
mainstream of the process. . . . [S]upplemental biological nitrifiers are
produced in the sidestream nitrification system 78 and these
supplemental nitrifiers are conveyed to the mainstream via line 84.
There the supplemental nitrifiers combined with nitrifiers produced in
the aeration tank 56 and the combined nitrifiers act to effectuate
complete and effective nitrification in the mainstream and particularly in
aeration tank 56 of the example shown. It should be also noted that
excess biological sludge full of nitrifiers held in the sidestream
nitrification system 78 can be conveyed to the mainstream and
particularly through the aeration tank 56 via line 80.
(’009 Patent, 5:39-6:23 (filing 58-2 at CM/ECF 9)) (boldface in original).
B. Claim 18
The Theresa Street Wastewater Treatment Facility is accused of infringing
Claim 18 of the ’009 Patent, which contains 5 steps:

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18. An activated sludge biological wastewater treatment process
having enhanced biological nitrification comprising the steps of:
(a) directing wastewater through a mainstream nitrification
process16 including at least one aerobic treatment zone and a final
clarifier that separates purified supernatant from settled sludge;
(b) returning at least a portion of the settled sludge from the final
clarifier to the mainstream treatment process;17
(c) producing supplemental biological nitrifiers18 in a sidestream19
by directing a stream having a relatively high concentration of ammonia
into a sidestream biological nitrification system and nitrifying the same

16

The phrase “mainstream nitrification process” is defined to include “[t]he
portion of the mainstream treatment process in which mainstream wastewater is
nitrified, meaning ammonia nitrogen in the mainstream, NH3—N, is converted to
nitrite or nitrate, both referred to NOx. This portion of the mainstream treatment
process takes place in the aerobic treatment zone(s).” Memorandum and Order entered
November 8, 2012 (“Markman Order”) (filing 80 at CM/ECF 2).
17

A “mainstream treatment process” is “a biological suspended growth
wastewater treatment process designed to treat a wastewater stream and produce
treated or purified effluent, which may include a series of treatment zones, but which
excludes any sidestream or sidestream treatment process.” Markman Order (filing 80
at CM/ECF 3).
18

The parties agree that the phrase “supplemental biological nitrifiers” means
“nitrifying bacteria produced outside of the mainstream nitrification process.” Joint
Claim Construction and Prehearing Statement (filing 50 at CM/ECF 1).
19

“The ‘mainstream’ is the wastewater stream flowing through the wastewater
treatment plant. Any stream other than the mainstream, auxiliary to treatment of the
wastewater stream, is a ‘sidestream.’” Markman Order (filing 80 at CM/ECF 3).
Basically, the “mainstream” is the top line of the particular process and system design
illustrated by Figure 2; the other lines shown in Figure 2, including the return
activated sludge line 64, are “sidestreams.” Markman Order (filing 80 at CM/ECF 24).
-20-

and in the process producing the supplemental biological nitrifiers in the
sidestream biological nitrification system;20
(d) transferring the supplemental biological nitrifiers produced in
the sidestream nitrification system to the mainstream nitrification process
where the supplemental nitrifiers assist in nitrifying the wastewater
passing through the mainstream nitrification process; and
(e) m[a]intaining sludge age within the mainstream nitrification
process at a value of less than 200% of the critical sludge age of a
conventional nitrification process.
(Filing 61-1 at CM/ECF 12-13) (underlining supplied).
Defendants argue there is no infringement of step (b) of Claim 18 because no
settled sludge is returned from the “final clarifier” (the “secondary settling tank” 60
in Figure 2 of the ’009 Patent), to the “mainstream nitrification process” (the aerobic
zone of the “mainstream biological treatment” area 14 in Figure 1 of the ’009 Patent;
the “aeration tank” 56 in Figure 2). Defendants’ evidence indicates that all of the
settled sludge is either sent to the “sidestream biological nitrification system” (the
“sidestream biological nitrification zone” 13 in Figure 1; 78 in Figure 2) or else
disposed of (74 in Figure 2). In other words, there is no “return activated sludge” line
(64 in Figure 2) at the Theresa Street Wastewater Treatment Facility.
Defendants argue there also is no infringement of step (d) of Claim 18 because
the supplemental biological nitrifiers produced in the “sidestream nitrification system”
(the “sidestream biological nitrification zone” 13 in Figure 1; 78 in Figure 2) are not
transferred to the “mainstream nitrification process” (the aerobic zone of the
“mainstream biological treatment” area 14 in Figure 1; the “aeration tank” 56 in
20

A “sidestream biological nitrification system” is “a system in which
nitrification occurs (i.e., ammonia nitrogen, NH3—N, is converted to nitrite or nitrate,
both referred to as NOx) that is separate from the zone in which nitrification occurs
during the mainstream treatment process.” Markman Order (filing 80 at CM/ECF 3).
-21-

Figure 2). Defendants’ evidence shows that the supplemental nitrifiers are directed
to the “mainstream inlet line” (54 in Figure 2) at the Theresa Street Wastewater
Treatment Facility.
Finally, Defendants argue that the ’009 Patent is invalid for indefiniteness
because the preamble to Claim 18 refers to an “activated sludge biological wastewater
treatment process,” and Plaintiffs allegedly have objected that the phrase “does not
make sense.” However, the evidence does not support Defendants’ argument.
IV. Discussion
“The court shall grant summary judgment if the movant shows that there is no
genuine dispute as to any material fact and the movant is entitled to judgment as a
matter of law.” Fed. R. Civ. P. 56(a). “The non-moving party receives the benefit of
all reasonable inferences supported by the evidence, but has ‘the obligation to come
forward with specific facts showing that there is a genuine issue for trial.’” Atkinson
v. City of Mountain View, 709 F.3d 1201, 1207 (8th Cir. 2013) (quoting Dahl v. Rice
Cnty., 621 F.3d 740, 743 (8th Cir. 2010)).
A. Alleged Infringement of the ’009 Patent
“Infringement, either literal or under the doctrine of equivalents, is a question
of fact.” Brilliant Instruments, Inc. v. GuideTech, LLC, 707 F.3d 1342, 1344 (Fed. Cir.
2013). “The burden is always on the patent holder to show infringement.” Schinzing
v. Mid-States Stainless, Inc., 415 F.3d 807, 813 (8th Cir. 2005).
“To establish literal infringement, every limitation set forth in a claim must be
found in an accused product, exactly.” Transocean Offshore Deepwater Drilling, Inc.
v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1356 (Fed.Cir. 2012) (quoting Southwall
Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1575 (Fed. Cir. 1995)). “If any claim
limitation is absent from the accused device, there is no literal infringement as a
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matter of law.” Cephalon, Inc. v. Watson Pharmaceuticals, Inc., 707 F.3d 1330, 1340
(Fed. Cir. 2013).
“To find infringement under the doctrine of equivalents, any differences
between the claimed invention and the accused product must be insubstantial.”
Brilliant Instruments, Inc., 707 F.3d at 1346. “One way of proving infringement under
the doctrine of equivalents is to show, for each claim limitation, that the accused
product ‘performs substantially the same function in substantially the same way with
substantially the same result as each claim limitation of the patented product.’” Id. at
1347 (quoting Crown Packaging Tech., Inc. v. Rexam Beverage Can Co., 559 F.3d
1308, 1312 (Fed. Cir. 2009)).
1. Claim 18(b)
It is undisputed that in the operation of the Theresa Street Facility, no settled
sludge is returned to the “mainstream treatment process” from a final clarifier. The
settled sludge is either disposed of or sent to a “prenitrification basin” that satisfies the
definition of a “sidestream biological nitrification system.” Because a “mainstream
treatment process” specifically “excludes any sidestream or sidestream treatment
process,” Markman Order (filing 80 at CM/ECF 3), it is evident that element (b) of
Claim 18 is missing in Defendants’ system. Thus, there is no literal infringement of
the ’009 Patent.
Plaintiffs’ unsworn statement, made “[u]pon information and belief,” that “most
of the settled sludge from the final clarifiers at the Theresa Street Facility is returned
to the mainstream treatment process” (filing 95-5 at CM/ECF 2, Response to Request
for Admission No. 4), does not create a genuine issue of material fact. Plaintiffs have
denied “that the Theresa Street Facility directs all of the settled sludge (that is not
excess or waste sludge) from the final clarifier to a sidestream biological nitrification
system,” stating that “[t]his contradicts a WEFTEC (Water Environment Federation’s
Annual Technical Exhibition and Conference) paper and statements previously made
-23-

by representatives of the Theresa Plant Facility” (filing 95-5 at CM/ECF 2, Response
to Request for Admission No. 5), but Defendants’ evidence establishes that the system
proposed in the paper was never constructed. While Plaintiffs’ brief in support of
their Rule 56(d) motion suggests that HDR representatives stated differently during
a meeting with Plaintiffs’ representatives on May 6, 2008, Plaintiffs have failed to
present any admissible evidence regarding the purported admissions.
Plaintiffs have also failed to present any evidence showing that the Theresa
Street Facility infringes the ’009 Patent under the doctrine of equivalents. Plaintiffs
have the “evidentiary burden of demonstrating by particularized testimony that the
accused [system] perform[s] substantially the same function in substantially the same
way to obtain the same result as the claimed system.” American Calcar, Inc. v.
American Honda Motor Co., Inc., 651 F.3d 1318, 1338 (Fed. Cir. 2011). “Such
evidence must be presented on a limitation-by-limitation basis.” Id. at 1339 (quoting
Texas Instruments, Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1567 (Fed.
Cir. 1996)). “The same rule applies in the summary judgment context.” Id. (citing
AquaTex Indus., Inc. v. Techniche Solutions, 479 F.3d 1320, 1326 (Fed. Cir. 2007)).
It follows that Defendants are entitled to summary judgment on Plaintiffs’ claim
of literal or equivalents patent infringement. Defendants are also entitled to partial
summary judgment on their counterclaim and a declaration non-infringement with
respect to Claim 18(b) of the ’009 Patent.
2. Claim 18(d)
Defendants additionally contend that element (d) of Claim 18 is absent in the
Theresa Street Facility because supplemental biological nitrifiers are not transferred
from the sidestream to the “mainstream nitrification process.” Defendants note that
the court, adopting a narrow definition proposed by Plaintiffs, construed the phrase
“mainstream nitrification process” to include only “[t]he portion of the mainstream
treatment process in which mainstream wastewater is nitrified, . . . [i.e.,] the aerobic
-24-

treatment zone(s).” Markman Order (filing 80 at CM/ECF 2). Defendants’ evidence
shows that “[a]ny supplemental nitrifiers produced in the sidestream nitrification
system at the Theresa Street Facility are transferred to the mainstream inlet line”; that
“the mainstream inlet line is an area where raw sewage is combined with the flow
from the sidestream nitrification system”; and that “[a]fter the raw sewage combines
with the flow from the sidestream nitrification system at the mainstream inlet line, the
waste moves to a non-oxic denitrification treatment area.” (Declaration of Ron Sova
dated May 17, 2013, ¶¶ 8-10 (filing 100-2 at CM/ECF 2)) (emphasis supplied).
When Plaintiffs were requested to “[a]dmit that the supplemental biological
nitrifiers produced in the sidestream biological nitrification system at the Theresa
Street Facility are transferred to the mainstream inlet line,” they objected that the
request “is vague and ambiguous in that it appears to imply that the mainstream inlet
line is part of the nitrification process. The mainstream inlet line is merely a structural
component and is neither part of the nitrification process nor a part of Patent
5,811,009.” (Filing 95-5 at CM/ECF 3, Response to Request for Admission No. 12).21
Plaintiffs further stated that “[t]he nitrifiers produced in the sidestream nitrification
process at the Theresa Street Facility are transferred to the mainstream biological
process, which includes the mainstream nitrification process.” (Filing 95-5 at
CM/ECF 3, Response to Request for Admission No. 11).
Figure 2 of the ’009 Patent provides some support for Plaintiffs’ position, as it
depicts a line that is used to transfer “nitrified dewatering liquid” from the “sidestream
biological nitrification zone” to the “mainstream inlet line.” The accompanying
description states:
21

However, the mainstream inlet line is part of the “mainstream,” which has
been defined as “the wastewater stream flowing through the wastewater treatment
plant.” Markman Order (filing 80 at CM/ECF 3). “Basically, the ‘mainstream’ is the
top line of the particular process and system design illustrated by Figure 2; the other
lines shown in Figure 2 . . . are sidestreams.” Markman Order (filing 80 at CM/ECF
24).
-25-

[S]upplemental biological nitrifiers are produced in the sidestream
nitrification system 78 and these supplemental nitrifiers are conveyed to
the mainstream [inlet line 54] via line 84. There the supplemental
nitrifiers combined with nitrifiers produced in the aeration tank 56 and
the combined nitrifiers act to effectuate complete and effective
nitrification in the mainstream and particularly in aeration tank 56 of the
example shown. It should be also noted that excess biological sludge full
of nitrifiers held in the sidestream nitrification system 78 can be
conveyed to the mainstream and particularly through the aeration tank
56 via line 80.
(’009 Patent, 6:13-23 (filing 58-2 at CM/ECF 9)) (boldface in original).22 Similarly,
the description related to Figure 1 states:
These biological nitrifiers are referred to in some cases herein as
supplemental nitrifiers because they are directed through line 11
[corresponding to line 80 in Figure 2] or 18 [corresponding to line 84 in
Figure 2] back to the mainstream 12. Here, the supplemental nitrifiers
combine with [nitrifiers?] produced in the mainstream to greatly enhance
and accelerate the mainstream nitrification process. Excess biological
sludge full of nitrifiers accumulated in the sidestream nitrification zone
13 can be directed to the mainstream treatment zone 14 via line 11.
(’009 Patent, 6:65-5:6 (filing 58-2 at CM/ECF 8-9)) (boldface in original).
Supporting Defendants’ construction, on the other hand, is the fact that two
other independent claims of the ’009 Patent describe the transfer of supplemental
22

It should be noted that the “particular process and system design” illustrated
in Figure 2 most closely corresponds to another independent claim of the ’009 Patent,
Claim 11, which includes the steps of “(e) directing another portion of the settled
sludge separated from the influent wastewater to a digester and subjecting that settled
sludge to digestion to form digested sludge; (f) separating the digested sludge into
dewatered sludge and dewatering liquid; [and] (g) directing the dewatering liquid into
a sidestream biological nitrification system to nitrify the same and to form nitrifiers”
(’009 Patent, 13:35-43 (filing 58-2 at CM/ECF 13)). Claim 18 does not require the
use of a digester or the separation of the digested sludge.
-26-

nitrifiers in significantly different terms than Claim 18. Thus, Claim 1(e) refers to
“transferring the supplemental nitrifiers from the sidestream biological nitrification
system to the mainstream treatment process where the supplemental nitrifiers assist
in nitrifying the influent wastewater passing through the mainstream treatment
process” (’009 Patent, 12:45-49 (filing 58-2 at CM/ECF 12)) (emphasis supplied),23
while Claim 11(h) speaks of “transferring the nitrifiers formed in the sidestream back
to the mainstream and mixing the nitrifiers with the influent wastewater in the
mainstream such that the nitrifiers produced in the sidestream contribute to the
nitrification process in the mainstream” (’009 Patent, 13:44-49 (filing 58-2 at
CM/ECF 13)) (emphasis supplied).24 Claim 18(d), of course, requires “transferring
the supplemental biological nitrifiers produced in the sidestream nitrification system
23

Consistent with this language, the first step of Claim 1 (element (a)) is
“directing influent wastewater through a mainstream treatment process including at
least one aerobic treatment zone and a final clarifier that separates purified supernatant
from settled sludge” (’009 Patent, 12:29-32 (filing 58-2 at CM/ECF 12)) (emphasis
supplied). Similarly, Claim (1)(b) requires “returning at least a portion of the settled
sludge from the final clarifier to the mainstream treatment process” (’009 Patent,
12:33-34 (filing 58-2 at CM/ECF 12)) (emphasis supplied), and Claim 1(f) requires
“maintaining the sludge age within the mainstream treatment process at a value of less
than 200% of the critical sludge age for a conventional nitrification process” (’009
Patent, 12:50-53 (filing 58-2 at CM/ECF 12)) (emphasis supplied)). Claim 1 does not
use “mainstream” as a stand-alone term, nor does it use the phrase “mainstream
nitrification process.”
24

Consistent with this language, the first two steps of Claim 11 (elements (a)
and (b)) are “directing influent wastewater into and through a mainstream” and
“treating the influent wastewater in the mainstream by nitrifying the same in an
aerobic zone” (’009 Patent, 13:25-28 (filing 58-2 at CM/ECF 13)) (emphasis
supplied). Likewise, Claim 11(d) requires “returning a portion of the settled sludge
back to the mainstream where it is mixed with the influent wastewater” (’009 Patent,
13:32-34 (filing 58-2 at CM/ECF 13)) (emphasis supplied), and Claim 11(i) requires
“maintaining sludge age within the mainstream to a value of less than 200% of the
critical sludge age for a conventional nitrification process” (’009 Patent, 13:49-52
(filing 58-2 at CM/ECF 13)) (emphasis supplied). The phrases “mainstream treatment
process” and “mainstream nitrification process” do not appear in Claim 11.
-27-

to the mainstream nitrification process where the supplemental nitrifiers assist in
nitrifying the wastewater passing through the mainstream nitrification process” (’009
Patent, 14:26-30 (filing 58-2 at CM/ECF 13)) (emphasis supplied).
In the absence of any evidence to the contrary, it must be presumed that the use
of different terms in the claims connotes different meanings. See CAE Screenplates
Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000). It
is also a familiar principle that “[a] word or phrase used consistently throughout a
patent claim should be interpreted consistently.” Id. (quoting Phonometrics, Inc. v.
Northern Telecom, Inc., 133 F.3d 1459, 1465 (Fed. Cir. 1998)).
Following the Markman hearing, the court separately defined “mainstream,”
“mainstream treatment process,” and “mainstream nitrification process,” in each
instance adopting the definition of the term or phrase that had been proposed by
Plaintiffs (filings 50, 80). The court was not previously asked to construe the term
“transferring” that is used in Claim 18(d) (as well as in Claims (1)(e) and 11(h)), but
the ordinary meaning of “transfer” is “[t]o convey or take from one place . . to
another.” Oxford English Dictionary (2d ed.1989), available at http://www.oed.com;
see also Black’s Law Dictionary (9th ed. 2009) (defining “transfer”“ as meaning “[t]o
convey or remove from one place . . . to another”).
At the Theresa Street Facility, supplemental nitrifiers are transferred from the
sidestream to the “mainstream.” This is the action described in Claim 11(h)—not the
action described in Claim 18(d). Supplemental nitrifiers may eventually enter the
“mainstream nitrification process,” after first passing through an anoxic portion of the
“mainstream treatment process,” but this indirect routing cannot reasonably be found
to satisfy Claim 18(d)’s specific requirement that the supplemental nitrifiers be
transferred from the sidestream to the “mainstream nitrification process.” Because
Plaintiffs have failed to provide any evidence of equivalence regarding these methods
of transferring supplemental nitrifiers, Defendants are entitled to summary judgment
and a declaration non-infringement with respect to Claim 18(d) of the ’009 Patent.
-28-

B. Alleged Invalidity of the ’009 Patent
A patent is presumed valid, and the burden of establishing the invalidity of a
patent or any claim thereof rests on the party asserting such invalidity. See 35 U.S.C.
§ 282(a). An invalidity defense must be proved by clear and convincing evidence.
Microsoft Corp. v. i4i Ltd. Partnership, 131 S.Ct. 2238, 2242 (2011).
Defendants argue that “[b]ecause the preamble to each independent claim (1,
11, and 18) of the ’009 Patent calls for a ‘biological nitrification process,’ which,
according to m2t, ‘does not make sense,’ the entire patent is invalid” (filing 99 at
CM/ECF 30). This arguments fails because the evidence only shows that when
Plaintiffs in discovery were requested to admit “that Plaintiffs are accusing the
Theresa Street Facility of being an activated sludge biological wastewater treatment
process,” Plaintiffs objected that the request for admission “does not make sense”
because “[t]he Theresa Street Facility is not a ‘process’” but, rather, “a wastewater
treatment plant” (filing 95-5 at CM/ECF 1). Plaintiffs did not admit that the phrase
“biological nitrification process” is ambiguous; they merely objected to the phrasing
of Defendants’ request for admission. Plaintiffs’ objection, which may not even be
well-founded, does not constitute clear and convincing evidence that the ’009 Patent
is invalid for indefiniteness. Defendants’ motion for summary judgment on their
counterclaim for a declaration of invalidity will be denied.
V. Conclusion
Plaintiffs’ motion for a continuance or other relief under Federal Rule of Civil
Procedure 56(d) will be denied for lack of a sufficient showing. Defendants’ motion
for summary judgment will be granted in part (as to non-infringement) and denied in
part (as to invalidity). The undisputed evidence establishes that Defendants’ Theresa
Street Wastewater Treatment Facility does not literally infringe elements (b) and (d)
of Claim 18 of the ’009 Patent, and there is no proof of infringement of Claim 18

-29-

under the doctrine of equivalents. Defendants’ evidence fails to establish by clear and
convincing evidence that the ’009 Patent is invalid.
Accordingly,
IT IS ORDERED:
1.

Filing 109, Plaintiffs’ Rule 56(d) motion to deny as premature, or in the
alternative, continue Defendants’ motion for summary judgment, is
denied in all respects.

2.

Filing 98, Defendants’ motion for summary judgment of invalidity and
non-infringement of U.S. Patent No. 5,811,009, is granted in part and
denied in part, as follows:
a.
The motion is granted to the limited extent that the court hereby
dismisses Plaintiffs’ claims with prejudice and declares that the
Theresa Street Wastewater Treatment Facility does not infringe
elements (b) and (d) of Claim 18 of the ’009 Patent.
b.
In all other respects, the motion is denied.

3.

This matter is referred to Magistrate Judge Cheryl R. Zwart for further
progression, as appropriate.

July 31, 2013.

BY THE COURT:

Richard G. Kopf
Senior United States District Judge

* This opinion may contain hyperlinks to other documents or Web sites. The U.S. District Court for the District
of Nebraska does not endorse, recommend, approve, or guarantee any third parties or the services or products they
provide on their Web sites. Likewise, the court has no agreements with any of these third parties or their Web sites. The
court accepts no responsibility for the availability or functionality of any hyperlink. Thus, the fact that a hyperlink ceases
to work or directs the user to some other site does not affect the opinion of the court.

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