Phil-Insul Corp. v. Reward Wall Systems, Inc. et al

Filing 168

MEMORANDUM AND ORDER RE: CLAIM CONSTRUCTION - IT IS ORDERED: 1. The Court construes the term "adjacent" to mean "next to... on the same panel or sidewall"; 2. The Court construes the term "substantially the same dimension&q uot; to mean "have the same measurable length, breadth, area and volume, with only minor variations in dimension of up to about 10%," and 3. The Court construes the term "substantially planar ends" to mean "substantially flat ends." Ordered by Chief Judge Laurie Smith Camp. (TCL )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEBRASKA
PHIL-INSUL CORP. d/b/a
INTEGRASPEC,
Plaintiff,
v.
REWARD WALL SYSTEMS, INC.,
BUILDBLOCK BUILDING SYSTEMS,
LLC, NUDURA CORPORATION,
POLYFORM, A.G.P., INC., and AMVIC
CORPORATION,
Defendants,

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CASE NO. 8:12CV91

MEMORANDUM AND ORDER
RE: CLAIM CONSTRUCTION

The matter before the court is the parties’ Joint Motion for Early Claim Construction
(Filing No. 79). Plaintiff Phil-Insul Corp. d/b/a IntegraSpec (“IntegraSpec”) has sued the
Defendants alleging they infringed United States Patent No. 5,428,933 (the “‘933 Patent”).
The ‘933 Patent originally issued on or about July 4, 1995. (Filing No. 92-1.) An ex parte
reexamination certificate issued on or about September 21, 2010. (Filing No. 92-2.) The
‘933 Patent relates to bidirectional and reversible insulating concrete forms (“ICFs”). It will
expire on February 14, 2014.
ICFs are used to build concrete walls for various types of buildings. They are
composed of two Styrofoam panels, spaced apart and held together by “ties or webs.”
They are stacked to erect a hollow wall into which concrete is poured and allowed to set.
The bidirectionality and reversibility of the ICFs relates to their ability to interconnect with
each other regardless of how the ICFs are rotated (horizontally or vertically). The ICFs
remain in place after the concrete sets, to serve as insulation for the building. For the ICFs

to work, they must be securely interconnected when stacked. The parties’ dispute
concerns the interconnecting means on the ICFs disclosed in the ‘933 Patent.
The reexamination certificate contains Claim 1, as amended, and Claim 19, which
was added during the reexamination of the ‘933 Patent. (Filing No. 92-2.) Claim 1 states:
1. In [an] a bi-directional and reversible insulating construction member
having substantially planar ends and top and bottom edges and
interconnecting means on said top and on said bottom edges, the
improvement wherein each said top interconnecting means [comprise] and
each said bottom interconnecting means has a pattern, each pattern
comprising at least two longitudinally extending rows of alternating,
continuous, immediately adjacent projections and recesses, extending
continuously along the entire length of said top and bottom edges, the end
projection in one row flush with at least a portion of one of said end planes,
within each said pattern each of said projections and recesses in each one
of said at least two rows within said pattern being of substantially the same
dimension, wherein within each said pattern said recess of one row is
adjacent said projection of the other row, and wherein said interconnecting
means patterns on said top and bottom edges are the same and are offset
arranged such that said recess of one row in said pattern on said top edge
is opposed to said projection of an opposite row [of] in said pattern on said
bottom edge; whereby said insulating construction member can be
interconnected with a like member in a bi-directional [or] and reversible
manner.
(Filing No. 92-2, at CM/ECF p. 3 (emphasis in original).)1 Claim 19 states:
19. A bi-directional and reversible insulating construction block comprising:
a pair of substantially parallel side members having top and bottom edges
and substantially planar ends;
joining means interconnecting said side members;
interconnecting means on said top and bottom edges, each said
interconnecting means including substantially identical patterns including at
least two longitudinal rows of alternating rectangular projections and
recesses in each of said patterns, each row in each said pattern comprising
1

W ords added during the reexam ination are in italics. W ords deleted during the reexam ination
process are in bold brackets. (Filing No. 92-2, colum n 1, lines 8-11 .)

2

more than one projection and more than one recess, with such alternating
projections and recesses being continuous along the entire length of said
rows and contiguous one with another, the end projection in one row flush
with at least a portion of one of said end planes, wherein said recess of one
row in each said pattern is adjacent said projection of the other row in the
same said pattern, within each said pattern, each of said projections and
recesses in each one of said at least two rows having substantially the same
dimensions;
wherein the interconnecting means patterns on said top and bottom edges
are substantially offset arranged such that said recess of one row in said
pattern on said top edge is opposed to said projection of an opposite row on
said bottom edge; whereby said construction block can be interlocked with
a like block in a bi-directional and reversible manner.
(Filing No. 92-2, at CM/ECF p. 4 (emphasis in original).)
On November 22, 2011, the parties filed their Joint Motion for Early Claim
Construction.2 They requested an early construction of three claim terms found in both
Claim 1 and Claim 19 of the ‘933 Patent. The parties have agreed that those limitations
should be construed the same way in both claims. The claim limitations the parties would
like the Court to construe are: (1) “adjacent”3; (2) “substantially the same dimension”4; and

2
This action was initiated in the United States District Court for the Eastern District of Texas. On
February 10, 2012, the Texas court directed that the action be transferred to this Court. (Filing No. 106.) The
action was placed on this Court’s docket on March 6, 2012. (See Docket entry for Filing No. 1 .)
3

Claim 1: “wherein within each said pattern said recess of one row is adjacent said projection of the
other row.“
Claim 19: “wherein said recess of one in each said pattern is adjacent said projection of the other row
in the sam e said pattern.”
4

Claim 1: “within each said pattern each of said projections and recesses in each one of said at least
two rows within said pattern being of substantially the same dimension.”
Claim 19: “within each said pattern, each of said projections and recesses in each one of said at least
two rows having substantially the same dimensions.”

3

(3) “substantially planar ends.” A Markman5 hearing was held before the undersigned on
June 29, 2012.
CLAIM CONSTRUCTION STANDARD OF REVIEW
To determine whether a patent has been infringed, the Court must undertake a
two-step analysis. “‘First, the [C]ourt determines the scope and meaning of the patent
claims asserted.’” Cordis Corp. v. Boston Scientific Corp., 658 F.3d 1347, 1354 (Fed. Cir.
2011) (quoting Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en
banc)). Second, “‘the properly construed claims are compared to the allegedly infringing
device.’” Id. Claim construction is a way “‘of elaborating the normally terse claim language
in order to understand and explain, but not change, the scope of the claims.’” Terlep v.
Brinkmann Corp., 418 F.3d 1379, 1382 (Fed. Cir. 2005) (quoting Embrex, Inc. v. Serv.
Eng’g Corp., 216 F.3d 1343, 1347 (Fed. Cir. 2000)). It is also “a matter of resolution of
disputed meanings and technical scope, to clarify and when necessary to explain what the
patentee covered by the claims, for use in the determination of infringement. It is not an
obligatory exercise in redundancy.” U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554,
1568 (Fed. Cir. 1997). “[A] sound claim construction need not always purge every shred
of ambiguity. The resolution of some line-drawing problems . . . is properly left to the trier
of fact.” Acumed LLC v. Stryker Corp., 483 F.3d 800, 806 (Fed. Cir. 2007) (citing PPG
Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1355 (Fed. Cir.1998); Modine Mfg. Co.
v. U.S. Int'l Trade Comm'n, 75 F.3d 1545, 1554 (Fed. Cir. 1996); Abbott Labs. v. Baxter
Pharm. Prods., Inc., 471 F.3d 1363, 1368 (Fed. Cir. 2006)).

5

See Markman v. W estview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) aff'd, 517 U.S. 370, 116
S. Ct. 1384 (1996).

4

“The words of a claim are generally given their ordinary and customary meaning,
which is ‘the meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention.’” NTP, Inc. v. Research In Motion, Ltd., 418 F.3d
1282, 1293 (Fed. Cir. 2005) (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir.
2005) (en banc)). To determine “the meaning of a claim term, ‘the court looks to those
sources available to the public that show what a person of ordinary skill in the art would
have understood disputed claim language to mean.’” Id. (quoting Phillips, 415 F.3d at
1314). Such “‘sources include the words of the claims themselves, the remainder of the
specification, the prosecution history, and extrinsic evidence concerning relevant scientific
principles, the meaning of technical terms, and the state of the art.’” Id.
The Court’s “primary focus in determining the ordinary and customary meaning of
a claim limitation is . . . the intrinsic evidence of record.” Atofina v. Great Lakes Chem.
Corp., 441 F.3d 991, 996 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312-17). The
analysis begins “with the language of the claims” themselves. Rexnord Corp. v. Laitram
Corp., 274 F.3d 1336, 1341-42 (Fed. Cir. 2001); see also Phillips, 415 F.3d at 1314 (“Quite
apart from the written description and the prosecution history, the claims themselves
provide substantial guidance as to the meaning of particular claim terms.”) However, “[t]he
claims . . . do not stand alone.” Phillips, 415 F.3d at 1315. Instead, “they are part of ‘a fully
integrated written instrument,’” and must be read in view of that fully integrated written
instrument. Id. (quoting Markman, 52 F.3d at 979).
After looking to the language of the claim itself, “[t]he most relevant source [for
ascertaining the meaning of a claim] is the patent's specification, which is ‘the single best

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guide to the meaning of a disputed term.’” MBO Labs. Inc. v. Becton, Dickinson & Co., 474
F.3d 1323, 1329 (Fed. Cir. 2007) (quoting Phillips, 415 F.3d at 1315). The next most
relevant source “is the prosecution history, which . . . directly reflects how the patentee has
characterized the invention.” Id. (citing Phillips, 415 F.3d at 1317). “‘[T]he specification
is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is
the single best guide to the meaning of a disputed term.’” Terlep, 418 F.3d at 1382
(quoting Phillips, 415 F.3d at 1314). However, “‘the prosecution history can often inform
the meaning of the claim language by demonstrating how the inventor understood the
invention and whether the inventor limited the invention in the course of prosecution,
making the claim scope narrower than it would otherwise be.’” Id. (quoting Phillips, 415
F.3d at 1317); see also Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366,
1374-75 (Fed. Cir. 2008) (citing Rexnord, 274 F.3d at 1343) (“Statements made during
prosecution may . . . affect the scope of the claims.”).
Under the “doctrine of prosecution disclaimer,” “‘a patentee may limit the meaning
of a claim term by making a clear and unmistakable disavowal of scope during
prosecution,’”6 such as by “clearly characterizing the invention in a way to try to overcome
rejections based on prior art.” Computer Docking Station, 519 F.3d at 1374 (quoting
Purdue Pharma L.P. v. Endo Pharms., Inc., 438 F.3d 1123, 1136 (Fed. Cir. 2006)) (citing
Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1349 (Fed. Cir. 2004)). When the
patentee limits the scope of a patent during its prosecution, “[t]he doctrine of prosecution

6

Although the doctrine of “prosecution history estoppel” is not applicable at this stage of the litigation,
the sam e “clear and unm istakable” standard applies to both the doctrine of “prosecution disclaim er” and the
doctrine of prosecution history estoppel, which applies “in the context of the doctrine of equivalents.” Omega
Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1325-26 & n.1 (Fed. Cir. 2003).

6

disclaimer . . . preclud[es] [the] patentee[ ] from recapturing through claim interpretation
specific meanings disclaimed during prosecution.“ Omega Eng'g, 334 F.3d at 1323 (citing
Crawford v. Heysinger, 123 U.S. 589, 602-04 (1887); Goodyear Dental Vulcanite Co. v.
Davis, 102 U.S. 222, 227; Graham v. John Deere Co., 383 U.S. 1, 33 (1966);
Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 220-21 (1940)). “Such a use
of the prosecution history ensures that claims are not construed one way in order to obtain
their allowance and in a different way against accused infringers.” Chimie v. PPG Indus.,
Inc., 402 F.3d 1371, 1384 (Fed. Cir. 2005) (citing Southwall Tech., Inc. v. Cardinal IG Co.,
54 F.3d 1570, 1576 (Fed. Cir. 1995)). Courts tend not to “to impose a precise numeric
constraint” on terms of degree, such as “substantially,” but will do so if “something in the
prosecution history impose[s] [a] ‘clear and unmistakable disclaimer’” that narrows the
meaning of the term beyond its “plain-language interpretation.” Playtex Products, Inc. v.
Procter & Gamble Co., 400 F.3d 901, 907 (Fed. Cir. 2005).
An “incorrect statement in the prosecution history does not govern the meaning of
the claims,” Rambus Inc. v. Infineon Techs. Ag, 318 F.3d 1081, 1090 (Fed. Cir. 2003),
when “[a] person of reasonable intelligence would not be misled into relying on the
erroneous statement.” Biotec Biologische Naturverpackungen GmbH & Co. KG v. Biocorp,
Inc., 249 F.3d 1341, 1348 (Fed. Cir. 2001). For example, an incorrect statement in the
prosecution history will not govern the meaning of a claim when the statement “is contrary
not only to the plain language of the claims and the specification, but also to other
statements in the same prosecution document.” Id. In other words, if it “would . . . have
been apparent to [an] interested reader that an error was made, . . . it would be unfair to

7

enforce the error.” Id. On the other hand, if it would not have been apparent to an
interested reader that an error was made-a person of reasonable intelligence would be
misled into relying on the erroneous statement-then an incorrect statement made during
the prosecution of a patent may govern the meaning of a claim term. See id.
“Extrinsic evidence . . . may be helpful [to ascertain the meaning of a claim term,]
but is ‘less significant than the intrinsic record in determining the legally operative meaning
of claim language.’” MBO Labs, 474 F.3d at 1329 (quoting Phillips, 415 F.3d at 1317).
Extrinsic evidence is very broad, and includes basically all evidence but intrinsic evidence.
Common forms of extrinsic evidence include dictionaries, reference books on the topic of
the art, expert testimony, and “other material not part of the public record associated with
the patent.” Id. Although a court may rely on extrinsic evidence, extrinsic evidence “cannot
be used to alter a claim construction dictated by a proper analysis of the intrinsic evidence.”
On-Line Tech. v. Bodenseewerk Perkin-Elmer, 386 F.3d 1133, 1139 (Fed. Cir. 2004); see
also Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1367 (Fed. Cir. 2003) (emphasis in
original) (“When an analysis of intrinsic evidence resolves any ambiguity in a disputed
claim term, it is improper to rely on extrinsic evidence to contradict the meaning so
ascertained”).
“‘[C]laims should be construed, if possible, as to sustain their validity.’” Rhine v.
Casio, Inc., 183 F.3d 1342, 1345 (Fed. Cir. 1999) (quoting Carman Indus., Inc. v. Wahl,
724 F.2d 932, 937 n.5 (Fed. Cir. 1983)) (citing ACS Hosp. Sys., Inc. v. Montefiore Hosp.,
732 F.2d 1572, 1577 (Fed. Cir. 1984)); see also Phillips, 415 F.3d at 1327 (quoting Rhine,
183 F.3d at 1345). “The applicability of th[is] doctrine in a particular case . . . depends on

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the strength of the inference that the [patent office] would have recognized that one claim
interpretation would render the claim invalid, and that the [patent office] would not have
issued the patent assuming that to be the proper construction of the term.” Phillips, 415
F.3d at 1328. Claims, however, will be construed to sustain their validity only if they are
susceptible to more than one reasonable interpretation. See Elekta Instruments, S.A. v.
O.U.R. Scientific Int’l., Inc., 214 F.3d 1302, 1309 (Fed. Cir. 2000) (citing Process Control
Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357 (Fed. Cir. 1999)) (“having concluded that
the amended claim is susceptible of only one reasonable construction, we cannot construe
them differently from its plain meaning in order to preserve its validity (upon which we do
not opine).”).
Furthermore, “[b]ecause claim terms are normally used consistently throughout the
patent, the usage of a term in one claim can often illuminate the meaning of the same term
in other claims.” Phillips, 415 F.3d at 1314 (citing Rexnord, 274 F.3d at 1342; CVI/Beta
Ventures, Inc. v. Tura LP, 112 F.3d 1146, 1159 (Fed. Cir. 1997)). Therefore, “a claim term
should be construed consistently with its appearance in other places in the same claim or
in other claims of the same patent.” Rexnord, 274 F.3d at 1342. A claim term should be
construed consistently throughout a claim or patent, however, only if the term is used in a
consistent way throughout the patent. Epcon Gas Sys., Inc. v. Bauer Compressors, Inc.,
279 F.3d 1022, 1030-31 (Fed. Cir. 2002). For example, a consistent construction of the
same claim term is not required when the term is used in a different manner or context
within the same patent. See id. (interpreting “substantially” in two different ways where
term was used in two different manners within the patent).

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CONSTRUCTION OF DISPUTED TERMS
I. “adjacent”
The Plaintiff contends that “adjacent” should be construed to mean “having X and
Y axes, the recess in one row along the Y axis alternates with (a) a projection in the same
row along the Y axis and (b) a projection in the other row along the x-axis.” The
Defendants propose two alternate constructions that they contend are appropriate for the
“adjacent” claim limitation.

First, the Defendants contend that “adjacent” could be

construed to mean “next to . . . on the same panel or sidewall.” Second, the Defendants
contend that “adjacent” could be construed to mean “lies within a distance equal to two
times the transverse dimension of a projection or recess from.”
The Plaintiff acknowledges that “adjacent” is susceptible to more than one
interpretation and asserts that the inventor gave the term his own meaning. The Plaintiff
contends that the inventor gave “adjacent” a positional-not a spatial-meaning. That is, the
Plaintiff asserts that the term “adjacent” does not limit where two rows of interconnecting
means are located; two rows may be on one ICF panel or, in the context of a construction
block, one row may be on one panel and the second row on another panel. (See Filing No.
96, at CM/ECF p.7, illustration 4.) The Plaintiff contends that so long as a projection on
one row is opposite or across from a recess on another row, the projection and recess are
“adjacent” to each other. The Plaintiff contends that it is irrelevant how near a projection
is to an “adjacent” recess.
To support its proposed construction, the Plaintiff points to lines 62 through 67 of
column 4 of the ‘933 Patent’s specification, which state:

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When two or more rows of projections 18 and recesses 20 are utilized the
projections 18 and recesses 20 must alternate in both the x and y axis, i.e.
a projection 18 of one row must be adjacent to a recess 20 of the other row
as well as being adjacent to a recess 20 of the same row.
(Filing No. 92-1, Column 4, lines 62-67 (emphasis in original).)7 The Plaintiff also points
to lines 21 through 24 of column 2, which state: “Where two rows of alternating projections
and recesses are provided, preferably the adjacent pairs of each row are opposites, i.e.
a recess of one row is preferably adjacent a projection of the other row.” (Filing No. 92-1,
column 2, lines 21-24.) Lines 25 and 26 of column 2 add: “[s]uch an arrangement provides
for a stronger interconnection between like insulating members.” (Filing No. 92-1, column
2, lines 24-26.)
The Plaintiff argues that the inventor chose to use the abbreviation for the Latin
phrase id est (i.e.) to signal that he defined “adjacent” to mean only that projections and
recesses have to alternate in both the x and y axes, not to mean that the two rows of
projections and recesses must be next to each other. See Tidel Eng’g L.P. v. Fire King
Int’l, Inc., 613 F. Supp. 2d 823, 829 (E.D. Tex. 2009) (quoting Aboott Labs v. Novopharm
Ltd., 323 F.3d 1324, 1330 (Fed. Cir. 2003)) (citing Pfizer, Inc. v. Teva Pharm, USA, Inc.,
429 F.3d 1364, 1373 (Fed. Cir. 2005)) (“Only when the intrinsic evidence supports an
alternate definition of the term preceding ‘i.e.’ has the Federal Circuit found that the
definition following ‘i.e.’ does not control.”). The Plaintiff contends that the most important
feature of the invention covered by the ‘933 Patent is its bidirectional and reversible

7

This portion of the specification m akes reference to “FIG. 1," which depicts a construction block with
two rows of projections and recesses on each of its panels. (Filing No. 92-1, colum n 4, lines 57-67 & Fig. 1.)
The Court notes that no figure in the ‘933 Patent depicts a panel, whether it is part of a construction block or
by itself, with less than two rows of projections and recesses. (See id. Figs. 1-7.)

11

capabilities, and the alternation of recesses and projections along the x and y axes is
required for an ICF to be bidirectional and reversible.
The Defendants contend that “adjacent” is used to indicate a spatial relationship;
that it is used to mean “near to.” The Defendants assert that lines 21 through 26 of column
2 in the specification indicate that “adjacent” was meant to describe a spatial relationship.
That is, those lines of the specification indicate that the greater the separation between a
recess in one row from a projection in another, the weaker the “interconnection between
[the] like insulating members.” (Filing No. 92-1, column 2, lines 21-26.) The Defendants
also contend that the language of Claim 1 itself indicates“adjacent” was used to indicate
a spatial relationship. The Defendants point to lines 29 through 35 of column 1 of the
reexamination certificate, which state: “wherein each said top interconnecting means . . .
and each said bottom interconnecting means has a pattern, each pattern comprising at
least two longitudinally extending rows of alternating, continuous, immediately adjacent
projections and recesses.” (Filing No. 92-2, column 1, lines 29-35 (emphasis in original).)
The Defendants argue that construing “adjacent” to mean “alternating” would render the
term “alternating” superfluous because the claim already contains the term “alternating”
and the parties do not dispute that term’s meaning. Finally, the Defendants contend that
construing the term “adjacent” to indicate a positional relationship would be inconsistent
with the logic of the ‘933 Patent’s prosecution history.
The Court finds that “adjacent” should be construed to mean “next to . . . on the
same panel or sidewall.” The intrinsic evidence supports construing “adjacent” to mean
something different from “alternates.” Construing “adjacent” to mean “alternates” in both
the x and y axes would render the term “alternating,” which Claims 1 and 19 already
12

contain, superfluous. In contrast, construing “adjacent” to have a spatial meaning would
give meaning to both “adjacent” and “alternating”: “alternating” would describe the
positional relationship of the projections and recesses; “adjacent” would describe their
spatial relationship. “A claim construction that gives meaning to all the terms of the claim
is preferred over one that does not do so.” See Merck & Co., Inc. v. Teva Pharms. USA,
Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005). Therefore, the claim language itself supports
construing “adjacent” to describe the spatial relationship between the at least two rows of
projections and recesses.8
Although the ‘933 Patent’s specification suggests that a construction block may
have only one row of projections and recesses per panel, it indicates that “adjacent” was
intended to have a spatial meaning, and the prosecution history creates a strong inference
that the patent office would have rejected Claims 1 and 19 if it assumed “adjacent” had a
positional meaning. The specification states one embodiment of the invention described
in the ‘933 Patent is an “insulating construction block comprising . . . interconnecting
means on the top and bottom edges, the interconnecting means including at least one row
of alternating projections and recesses.” (Filing No. 92-1, column 1, lines 63-65, through
column 2, lines 1-2.) However, it also states:

8

The Court also notes that to describe the relationship between the projections and recesses on the
top of a construction m em ber and the projections and recesses on the bottom of the sam e construction
m em ber, the ‘933 Patent states: “wherein said interconnecting m eans patterns on said top and bottom edges
are the sam e and are offset arranged such that said recess of one row in said pattern on said top edge is
opposed to said projection of an opposite row in said pattern on said bottom edge.” (Filing No. 92-2, at
colum n 1, lines 41-45 (em phasis added).) W hile the ‘933 Patent uses “opposed,” a word that clearly indicates
a positional relationship, to describe the relationship between the projections and recesses on the top side
of an ICF and the projections and recesses on the bottom side of the ICF, it uses the word “adjacent” to
describe the at least two rows of projections and recesses on one side (top or bottom ) of an ICF.

13

The interconnecting means on the top and bottom edges are substantially
symmetrical whereby the insulating construction block can be interlocked
with a like block in a bi-directional and/or reversible manner.
...
Preferably, the interconnection means on the top and bottom edges of the
insulating construction panel or block includes two rows of alternating
projections and recesses. Where two rows of alternating projections and
recesses are provided, preferably the adjacent pairs of each row are
opposites, i.e. a recess of one row is preferably adjacent a projection of the
other row. Such an arrangement provides for a stronger interconnection
between like insulating members.
(Filing No. 92-1, column 2, lines 3-7, 18-26.) Thus, the specification suggests that while
the relationship between the projections and recesses on the top and bottom of the same
construction member is key to the construction member’s bidirectionality and reversibility,
the purpose of having a “recess of one row . . . adjacent [to] a projection of the other row”
is to “provide[ ] . . . a stronger interconnection” between ICFs. Without the strong
interconnection created by “adjacent” rows of projections and recesses, the ICFs would be
prone to concrete leaking out from within the cavity of the construction block.9
9

See also Filing No. 92-6, at INT001496-1500 (em phasis added):

Thus, a form like Guarriello that has longitudinally spaced apart, rather than immediately
adjacent, projections and recesses in between adjoining sections will not resist the shear
forces as effectively as the claim ed form .
...
Leakage problem s are extrem ely serious in building an ICF wall. . . . The claim ed form
overcom es this problem by using closely spaced, i.e. immediately adjacent, projections and
recesses to create greater total frictional force and seal between an upper and lower course
of form s thereby resisting form lift and preventing concrete leakage.
...
It is also im portant that projections and recesses be immediately adjacent to one another
thereby eliminating any space and further assuring the largest num ber of projections and
recesses within a row given their size. This advantage is particularly apparent when
com paring the ‘933 claim ed form to the Guarriello ‘222 form em bodim ents. As can be seen,
the projections and recesses in Guarriello com e in pairs, with a space between the pairs,
thus not m axim izing the num ber of projections and recesses that are accom m odated within
one row. In other words, the Guarriello ‘222 form has projections and recesses that are not
immediately adjacent nor continuously extending along the entire length of the form upper
and lower edges.
...
The spaces between adjacent pairs of projections and recesses in Guarriello is far inferior

14

The ‘933 Patent’s prosecution history also makes clear that “adjacent” should be
construed to have a spacial meaning. The prosecution history clearly reflects that the
patentee used “adjacent” to indicate the “spacial closeness,” and not the positional
relationship, of a projection in one row and a recess in another.
On or about February 14, 1994, Claim 1 was submitted to the patent office. At that
time it did not indicate the minimum number of rows of projections and recesses that
needed to be on an ICF under the ‘933 Patent. At the same time, Claim 4, which became
Claim 11 through claim amendment, was submitted and referred to “at least one row” of
interconnecting means as the minimum number of rows on a construction block. (Filing
No. 92-3, at INT000034, INT000048.) On or about October 7, 1994, the patent office
rejected Claims 1 and 4, indicating that Patent No. 4,894,969 (“Hrobin ‘969") covered the
invention described in those claims. (Id. at INT000103-04; see also Filing No. 93-3.) The
patent office explained that Hrobin ‘969 disclosed “an insulating construction block
comprising a pair of parallel insulation side members (12, 14) having top an[d] bottom
edges and both having interconnecting means, said interconnecting means at the top and
bottom edges comprising a row of alternating projections (38, 45) and recesses (40, 46).”
(Id. at INT000103-04.) In response to the patent office’s rejection of Claims 1 and 4, the
patentee amended Claim 1 and 4 so that the ICFs covered would have ”at least two rows
of alternating projections and recesses being of substantially the same dimension, wherein

to the arrangem ent in the claim ed form with respect to the strength and integrity of
interlocking elem ents.

15

[said] recess of one row is adjacent [said] projection of the other row.” (Id. at INT00011617 (emphasis in original).)10
When it was originally submitted, Claim 1 also did not disclose that the rows of
projections and recesses were “longitudinally extending,” or that the recesses and
projections on those rows were “continuous, [and] immediately adjacent.” (See id. at
INT000048.) When Claim 1 was amended so that it would include the terms “continuous,
immediately adjacent” to describe the “at least two longitudinally extending rows of
alternating . . . projections and recesses” (Filing No. 92-6, at INT001435 (emphasis in
original)), the patentee explained that those terms were inserted to make “clear that there
[we]re no spaces between the projections and recesses” in the ‘933 Patent, thereby
“distinguish[ing] [it from] the Guarriello and Hrobin combination.” (Id. at INT001445
(emphasis in original).) The patent office accepted the claims as amended. (Filing No. 921.)
On or about November 4, 2003, Claim 19 was added to the ‘933 Patent. (Filing No.
92-7, at INT001879.) Claim 19 originally stated:
interconnecting means on said top and bottom edges, said interconnecting
means including at least two rows of alternating projections and recesses,
each row comprising more than one projection and more than one recess,
with such alternating projections and recesses being continuous and
contiguous, wherein said recesses of one row is adjacent said projection on
the other row.
(Id. at INT001880.) The reexamination office rejected Claim 19. Thereafter, the patentee
deleted the term “adjacent” from Claim 19 and inserted the words “transversely aligned.”
(Filing No. 92-5, at INT001367 (emphasis in original).) The patentee explained:

10

Claim 4 becam e Claim 11 at this tim e.

16

Claim 19 includes the limitations set forth in Claim 1 but additionally includes
the limitation that the recess of one row is “transversely aligned with” the
projection of the other row. The prior language used the word “adjacent.”
The claim is intended to cover a block in which the top or bottom two edges
of the panels have only one row of projections and recesses and thus the
language “at least two rows” covers two rows on one panel, or one row on
each of two panels. While the word “adjacent,” according to the Board, may
include a space between two objects that are next to one another, in this
case, the cavity, Patentee believes that another way of expressing the
alteration in projections and recesses in a transverse direction is the term
“transversely aligned.”
(Id. at INT001405.) When attempting to distinguish the ‘933 Patent from the prior art found
in Patent No. 5,123,222 (“Guarriello ‘222") (Filing No. 93-2), the patentee also explained
that “[t]he Guarriello projections and recesses do not constitute a row, as that term is
properly defined, because the projections and recesses are arranged in pairs, the pairs are
not adjacent and thus do not form a ‘row.’” (Filing No. 92-5, at INT001239.) The patentee
stated that the projections and recesses found in the ‘933 Patent “are not in spaced apart
pairs of adjacent projections and recesses as in Guarriello.” (Id. at INT001251.) Amended
Claim 19 was rejected again, this time because it did “not have at least all of the limitations
of the patented claims. For example, the claim lack[ed] the limitation of ‘said recess of one
row is adjacent said projection of the other row.’” (Filing No. 92-4, at INT1045.) The
patentee thereafter removed the words “transversely aligned” from Claim 19 and reinserted
the term “adjacent”

(Id. at INT001038).11

On September 21, 2012, the ex parte

reexamination certificate issued (Filing No. 92-2.)

11

“As for last-revised Claim 19, Patentee has rem oved the words ‘transversely aligned with” and has
substituted therefore ‘adjacent;’ the word ‘adjacent’ appears in the ‘933 [P]atent Claim 1, ‘transversely aligned’
does not.” (Id. at INT001038.)

17

Thus, a review of the prosecution history makes clear that: the patent office rejected
Claims 1 and 4 because Hrobin ‘969 already disclosed a construction block each panel of
the block had one row of alternating projections and recesses; the patentee inserted the
limitation “at least two rows” into Claim 1 to distinguish it from Hrobin ‘969 and to convince
the patent office to allow the claim; the patentee inserted the limitation “continuous,
immediately adjacent” to make clear that there would be “no spaces” between projections
and recesses in order to distinguish the claim from Hrobin ‘969 and Guarriello ‘222;12 and
the patent office accepted Claim 1 as amended. In other words, the prosecution history
makes clear that the patentee agreed to limit the scope of Claim 1 to cover construction
members with at least two rows of projections and recesses on a panel even if the
construction member is a construction block13 in order to overcome the patent office’s
rejection based on Hrobin ‘969, and inserted “continuous, immediately adjacent” because

12

See also supra n. 9 and accom panying text.

13

The Court notes that Claim 2 of the ‘933 Patent states:

An insulating construction m em ber according to claim 1, wherein said m em ber is an
insulating construction block comprising two panels, each of said panels having a pattern on
the top and bottom edges, each of said patterns on each of said panels comprising at least
one longitudinally extending row of alternating, continuous, immediately adjacent projections
and recesses and each of said projections and each of said recesses within each said
pattern in said at least one row being of substantially the same dimension.
(Filing No. 92-2, at colum n 1, lines 49-57 (em phasis in original).) Although Claim 2 discloses a construction
block on which each panel m ay have only one row of projections and recesses and a dependent claim that
“‘adds a particular lim itation raises a presum ption that the lim itation in question is not found in the independent
claim ,’” Acumed LLC v. Stryker Corp., 483 F.3d 800, 806 (Fed. Cir. 2007), it would be inconsistent with the
specification and prosecution history to construe “adjacent” in Claim 1 to m ean that projections and recesses
m ay be “adjacent” even if they are spaced apart. Furtherm ore, the prosecution history creates a strong
inference that the patent office would not have issued the ‘933 Patent with Claim 1or Claim 19 if they
encom passed construction blocks where the block’s two panels each had only one row of projections and
recesses, and “adjacent” is susceptible to being interpreted as “next to . . . on the sam e panel or sidewall.”
Rhine, 183 F.3d at 1345 (quoting Carman Indus., 724 F.2d at 937 n.5 (Fed. Cir. 1983)) (citing ACS Hosp.
Sys., 732 F.2d at 1577) (“‘[C]laim s should be construed, if possible, . . . to sustain their validity.’”); see also
Phillips, 415 F.3d at 1327 (quoting Rhine, 183 F.3d at 1345).

18

of its spacial meaning. The prosecution history also makes clear that the patent office did
not consider “transversely aligned” to mean “adjacent,” that substituting “transversely
aligned” for the word “adjacent” would broaden Claim 19, and thus, that the patent office
would have rejected the claim if “adjacent” meant “transversely aligned.” Finally, the
prosecution history makes clear that the patentee agreed to, or at least acquiesced in, the
patent office’s determination that “transversely aligned” did not mean “adjacent” when the
patentee did not appeal the patent office’s determination and instead removed
“transversely aligned” from the claims and re-inserted “adjacent.”
If the Court were to construe “adjacent,” to mean “alternates” in the x and y axes,
“adjacent” would haven been construed one way to obtain the allowance of Claims 1 and
19 and another way in this suit against the Defendants, which would be improper. Chimie,
402 F.3d at 1384 (citing Southwall Tech., 54 F.3d at 1576) (“Such a use of the prosecution
history ensures that claims are not construed one way in order to obtain their allowance
and in a different way against accused infringers.”); see also Rhine, 183 F.3d at 1345
(quoting Carman Indus., 724 F.2d at 937 n.5) (citing ACS Hosp. Sys., 732 F.2d at 1577)
(“‘[C]laims should be construed, if possible, as to sustain their validity.’”). In the context of
this patent, a person of ordinary skill in the art of concrete construction would understand
“adjacent” to have a spatial meaning. The Defendants’ first proposed construction gives
“adjacent” a spatial meaning and would be easy for a jury to understand.

See

Reedhycalog UK, Ltd. v. Baker Hughes Oilfield Operations Inc., No. 6:06CV222, 2007 WL
3001423, *4 (E.D. Tex. Oct. 12, 2007) (“A lay jury will understand what ‘substantially’
means, and therefore the term does not require construction.”); IPPV Enters., LLC v.

19

Echostar Commc’ns Corp., 106 F. Supp. 2d 595, 601 (D. Del. 2000) (“The court will base
the jury instructions in this case on the construction of the claims adopted herein.”).
Therefore, the Court will construe “adjacent” to mean: next to . . . on the same panel or
sidewall.
II. “substantially the same dimension”
The Plaintiff contends that the term “dimension” in the limitation “substantially the
same dimension,” refers only to the linear dimension measured along a projection’s or a
recess’s longitudinal axis. In other words, the Plaintiff argues that the ‘933 Patent only
requires each projection and recess within a pattern of interconnecting means to be
“substantially the same dimension along the longitudinal axis of an ICF.” The Defendants
contend that “substantially the same dimension” should be construed to mean “have the
same measurable length, breadth, area and volume with only unintentional variations of
1-2% in dimension implicit in the manufacturing process.” That is, the Defendants argue
that “dimension” refers to all three dimensions of a projection and recess, not just the
measurement of the recesses and projections taken along their longitudinal axes. They
contend that the term “substantially” is used to modify “dimension” because the Styrofoam
used to make an ICF tends to shrink when it sets and, therefore, the projections and
recesses will tend to differ slightly in their measurements even if the manufacturer tries to
make the measurements of the projections and recesses exactly the same.
The parties agree that the claim language and the specification do not make clear
which dimension or dimensions are to be considered when the ‘933 Patent states

20

“substantially the same dimension.”14 The Defendants contend that the prosecution history
supports their proposed construction of “substantially the same dimension.” The Plaintiff
contends that the portion of the prosecution history the Defendants rely upon resulted from
a mistake the patentee’s attorney made and, therefore, does not affect the scope of the
‘933 Patent. The Defendants argue that the attorney’s statement was not a mistake, but
even if it was, that the patentee attempted to correct it, failed, and acquiesced in the patent
office’s determination that “same dimension” referred to more than just the linear
dimension of the projections and recesses measured along the longitudinal axis of the ICF.
Based on the intrinsic evidence, the Court finds that “substantially the same
dimension” should be construed to mean “have the same measurable length, breadth, area
and volume, with only minor variations in dimension of up to about 10%.” The prosecution
history shows that Claims 1 and 19 were rejected “as being anticipated by Guarriello
[‘222],” for various reasons, one of which was that Guarriello ‘222 disclosed an ICF with
interconnecting means comprised of “projections and recesses being of substantially the
same dimension.” (See Filing No. 92-7, at INT001761, 1764, 1767, 1769 (emphasis in
original).)

When addressing the rejections based on Guarriello ‘222, the patentee

maintained that the ‘933 Patent was distinguishable from Guarriello ‘222 because
Guarriello ‘222 did not disclose projections and recesses that were “substantially the same
dimension.” (Id. at INT001806.) The patentee cited to the New Shorter Oxford English

14

The Court notes that the “Sum m ary of the Invention” states: “the projections and recesses of the
interconnecting m eans are of substantially the sam e shape and dim ensions and, in one preferred form , are
of a rectangular configuration, although it will be understood that any other configuration can be utilized, such
as, for exam ple, circular, square, triangular, polygonal, etc.” (Filing No. 92-1, colum n 2, lines 40-45.) Thus,
the ‘933 Patent’s specification suggests that “dim ension” refers to m ore than just the longitudinal dim ension
of the projections and recesses.

21

Dictionary, Clarendon Press, Oxford (1993 ed.), in support of its argument. (Id. at
INT001807.) The New Shorter Oxford English Dictionary to which the patentee cited
defined “dimension” as the “[m]easurable spacial extent of any kind, as length, breadth,
area, volume.” (Id. at INT001789.) With this definition in mind, the patentee maintained:
Thus, using ordinary dictionary definitions, the phrase “said projections and
recesses being of substantially the same dimension” necessarily means that
the projections and recesses have, essentially or in substance, the same
measurable length, breadth, area and volume. There is nothing in the
specification that in any way teaches away from this interpretation; indeed
the specification is entirely consonant with these definitions.
(Id. at INT001807 (emphasis added).)15

The patentee also asserted that the term

“substantially,” when read together with “same dimension,” would allow for minor variations
in size, such as variations implicit in manufacturing processes. (Id. at INT001809.) The
Board of Patent Appeals relied on the patentee’s statements and found that the projections
and recesses in Guarriello ‘222 were not “substantially the same dimension,” but rejected
Claim 1 on different grounds. (Filing No. 92-6, at INT001539, INT001542-44.) The Board
of Patent Appeals, giving the term its broadest reasonable interpretation, also “credit[ed]
[the inventor]’s testimony that ‘substantially the same dimensions’ for foamed material
forms would be understood by a person of ordinary skill in the art to be about 1 to 2%

15

The Plaintiff contends that the patentee’s counsel m istakenly inserted “and” into the definition of
“dim ension.” The prosecution history does not support the Plaintiff’s contention. (See Filing N o. 92-7, at
INT001810 (“It is also clear that the recesses or channels are not ‘the sam e dim ension,’ one com pared with
the other. Channel 274 is an ordinary rectangular space; channel 276, which includes slot 286, is an ‘L’
shaped space. It is axiom atic that different shapes cannot have ‘the sam e dim ension.’”)). The patentee m ay
have attem pted to distinguish the projections and recesses in the ‘933 Patent from Guarriello ‘222 based on
the projections and recesses in Guarriello ‘222 varying in m easurem ent along their longitudinal axes.
However, distinguishing prior art from the ‘933 Patent based on m easurem ents taken along just one axis is
not inconsistent with the definition of “dim ension” for which the patentee argued before the patent office. The
patentee could have successfully distinguished the ‘933 Patent from the prior art using any one of the four
com ponents of the definition of “dim ension” it set forth .

22

variation in dimension.” (Id. at 00INT1539.) The patent office rejected the patentee’s
argument that “‘substantially the same dimensions’ does not encompass ‘intentional’
differences in dimensions.” (Id. at INT001539.)16
Thereafter, the patentee attempted to amend Claim 1 and to add Claim 19 to the
‘933 Patent. (Id. at INT001157, INT001160.) The patentee tried to add to Claim 1
“measured along a longitudinal axis” after “substantially the same dimension.” (Filing No.
92-4, at INT001157 (emphasis in original).) The patentee also tried to include the
language “substantially the same dimension measured along the longitudinal axis” within
Claim 19. (Id. at INT001160 (emphasis in original).) At the same time, the patentee
sought to clarify that the inventor’s testimony upon which the Board of Patent Appeals
relied actually indicated that “the total variation due to manufacturing variability is
approximately 10%.” (Filing No. 92-6, at INT001447.) The patentee pointed to paragraph
10 of the inventor’s declaration, which states: “There is also inherent variability in
manufacturing processes, which will result in differences of dimension on the order of a few

16

Mr. Philippe has extensive experience in the concrete construction industry and declares that
his testim ony is taken from the vantage point of a person of ordinary skill in the art. Further,
Mr. Philippe’s “m inor variation” definition is reasonable on its face and is not inconsistent with
W ebster’s definition. Based upon the evidence presented, we credit Mr. Philippe’s testim ony
and conclude that the broadest reasonable interpretation for the claim term “substantially” is
m inor variations, such as those im plicit in m anufacturing processes. Additionally, we credit
Mr. Philippe’s testim ony that “substantially the sam e dim ension” for foam ed m aterial form s
would be understood by a person of ordinary skill in the art to be about 1 to 2% variation in
dim ension.
Patentee also argues that the term “substantially the sam e dim ensions” does not encom pass
intentional differences in dim ensions. . . . Patentee fails to provide a legal basis for such a
subjective approach to claim interpretation. Specifically, Patentee fails to direct our attention
to a legal basis for alleging that a prior art article that is identical in every way to a claim ed
invention fails to anticipate the claim ed invention unless the prior art article was intentionally
designed to be the sam e as that claim ed.
(Id.)

23

hundredths of an inch up to roughly a tenth of an inch or so for small structures.” (Filing
No. 92-7, at INT001874 ¶ 10.) The patentee asserted that “[t]he reference to ‘small
structures’ obviously refers to the size of a projection or recess. Such projections and
recesses are on the order of one inch or even less. Thus, a tenth of an inch would be a
ten percent variation in such ‘small structure.’” (Filing No. 92-6, at INT001451.)
On March 15, 2010, the patent office stated that “examiner notifies applicant of the
language of claims 1 [and] 19 to ‘measured along the longitudinal axis’ should be deleted
as they appear to broaden the claims[.]” (Filing No. 92-4, at INT000996 (emphasis in
original).) The patent office did not make mention of the patentee’s clarification of the
inventor’s testimony with respect to variations implicit in the manufacturing process. (See
id.) On March 16, 2010, the patentee deleted from Claims 1 and 19 the phrase “measured
along the longitudinal axis” (Id. at INT001013), and stated “[o]ut of an abundance of
caution, [that it] wishe[d] to make clear that the statements” the examiner made on March
15, 2010, were “correct in all respects and those changes were incorporated” into the
amendments “filed on March 16, 2010.” (Id. at INT000991.) The reexamination certificate
issued thereafter.
Thus, the prosecution history makes clear that the patentee limited the meaning of
“substantially the same dimension” to include more than just the longitudinal axis of an ICF.
The prosecution history indicates that the patentee argued intentionally that “dimension”
referred to more than just the longitudinal axis of a projection and/or recess to distinguish
the ‘933 Patent from the prior art. Even if the patentee made an incorrect statement when
distinguishing the ‘933 Patent from the prior art, “[a] person of reasonable intelligence”

24

would have relied on the statement; it is not contrary to the claim language, the
specification, or the prosecution history. Therefore, it would still govern the meaning of
“adjacent.” See Biotec, 249 F.3d at 1348. Furthermore, a strong inference may be drawn
from the prosecution history that the patent office recognized Claims 1 and 19 would be
invalid if Claims 1 and 19 were amended to state that “dimension” referred only to the
longitudinal axis of an ICF, and the patentee expressly stated that it believed this statement
to be correct in all respects and deleted those words from Claims 1 and 19.
The prosecution history also makes clear that, with respect to this limitation, the
patentee limited the meaning of “substantially” to the numeric constraint of “minor
variations in dimension of up to about 10%.” See Playtex, 400 F.3d at 902. The
prosecution history shows that the claims encompass more than just projections and
recesses with unintentional deviations in dimension. The patentee attempted to distinguish
the ‘933 Patent from the prior art by arguing that‘933 Patent did “not encompass
[projections and recesses with] ‘intentional’ differences in dimensions.” (Filing No. 92-6,
at INT001539.) The patent office rejected that argument. (Id.) Thus, the prosecution
history creates a strong inference that the patent office would have rejected the’933 Patent
if “substantially” imposed a requirement that the variations in the projections’ and recesses’
“dimension” be unintentional.17 The prosecution history makes clear that although the

17

The prosecution history indicates that “variations im plicit in the m anufacturing process” was used
to describe the m agnitude of variations in dim ension encom passed by “substantially the sam e dim ension,”
but not to indicate that variations had to be unintentional variations. See, e.g., Filing No. 92-6, at INT001542
(em phasis added) (“W e have credited Mr. Philippe’s testim ony that one of ordinary skill in the art would
understand that the term inology substantially the sam e dim ensions refers to variations on the order of those
im plicit in the m anufacturing process.”); Id. at INT001539 (em phasis added) (“Based upon the evidence
presented, we credit Mr. Philippe’s testim ony and conclude that the broadest reasonable interpretation for the
claim term ‘substantially’ is minor variations, such as those im plicit in m anufacturing processes.”).

25

patent office considered “variations of about 1 to 2%” to be the broadest reasonable
interpretation of “minor variations,” that interpretation was not required for the ‘933 Patent
to overcome the prior art. The projections and recesses of the prior art “var[ied] by
significantly more than 2%;” they varied by “approximately 20%.” (Id. at INT001542.)
Furthermore, after the patent office gave “minor variations, such as those implicit in the
manufacturing process” its broadest reasonable interpretation, the patentee clarified that
a person or ordinary skill in the art of concrete construction at the time of the invention
would consider “substantially the same dimension” to mean that the “dimensions” of
projections and/or recesses could vary by up to about 10% and still be considered
“substantially the same.”18 The patent office did not take issue with the patentee’s
clarification (see Filing No. 92-4, at INT000996), and the reexamination certificate issued.
Construing “dimension” to mean “the same measurable length, breadth, area and
volume,” and “substantially,” when it is used in the phrase “substantially the same
dimension,” to mean “with only minor variations in dimension of up to about 10%” will
ensure that Claims 1 and 19 “were not construed one way in order to obtain their allowance
and in a different way against” the Defendants. Chimie, 402 F.3d at 1384 (citing Southwall
Tech., 54 F.3d at 1576).

Furthermore, the prosecution history makes clear that

18

See Atl. Thermoplastics C o., Inc. v. Faytex Corp., 970 F.2d 834, 846 (Fed. Cir. 1992) (citations
om itted) (“This court perm its the [patent office] to give claim s their broadest reasonable m eaning when
determ ining patentability. . . . During litigation determ ining validity or infringem ent, however, this approach is
inapplicable. . . . Rather the courts m ust consult the specification, prosecution history, prior art, and other
claim s to determ ine the proper construction of the claim language.”); see also In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984))
(citations om itted) (“Giving claim s their broadest reasonable construction ‘serves the public interest by
reducing the possibility that claim s, finally allowed, will be given broader scope than is justified.’”); see also
In re Yamamoto, 740 F.2d 1569, 1572 (Fed. Cir. 1984) (“W hen an application is pending in the [patent office],
the applicant has the ability to correct errors in claim language and adjust the scope of claim protection as
needed.”).

26

“substantially” was intended to “impose a precise numeric constraint” on the word “same
dimension. See Platex, 400 F.3d at 907. Therefore, the Court will construe “substantially
the same dimension” to mean: have the same measurable length, breadth, area and
volume, with only minor variations in dimension of up to about 10%.
III. “substantially planar ends”
The parties do not dispute what the terms “planar” or “ends” mean. They agree that
“planar” means “flat,” and that “ends” refers to the surfaces found at reference numerals
10, 12, and 34 in Figures 1 and 2. (See Filing No. 92-1, Figs. 1 & 2.)
The Defendants contend that “substantially” should be construed the same way for
both the “substantially planar ends” limitation and the “substantially the same dimension”
limitation. They contend that the only variations from “flat” that fall within the scope of
Claims 1 and 19 are unintentional variations in flatness implicit in the process of
manufacturing an ICF. Therefore, the Defendants contend that “substantially planar ends”
should be construed to mean “flat ends situated in a plane with only unintentional
variations implicit in manufacturing processes.” The Plaintiff argues that the “substantially
planar ends” limitation does not need to be construed for the jury. Instead, they maintain
that the terms should be given their plain and ordinary meaning.19
Unlike the “substantially the same dimension” limitation, the intrinsic evidence
applicable here does not indicate that “substantially” was intended to “impose a precise
numeric constraint” on the “planar ends” limitation, see Playtex, 400 F.3d at 907, or that

19

The Plaintiff asserts that, to the extent that the Court decides the lim itation m ust be construed, it
should be construed to m ean “ICF panel ends that are flat or nearly flat including a low profile tongue and
groove joint.” The Plaintiff contends that the ‘933 Patent and its prosecution history m ake clear that even
intentional deviations from com pletely flat are within the scope of “substantially planar ends.”

27

the ‘933 Patent only contemplates unintentional deviations from flat with respect to its
“ends.” The claims themselves do not reveal the construction that should be given to the
limitation “substantially planar ends.” The ‘933 Patent discloses, however, that the “ends”
may be “substantially” flat even if they have portions that are slightly raised. Although
Figure 1 of the ‘933 Patent discloses an embodiment of the invention in which the “ends”
appear completely flat, Figures 6 and 7 depict construction blocks with distinct patterns of
slightly raised sections on their “ends.” (Filing No. 92-1, Figs. 6 & 7, INT000012, column
4, lines 30-34). The distinct pattern of raised sections indicates that a person of ordinary
skill in the art of concrete construction would believe “substantially planar ends” means
slight deviations from “completely flat,” even if the deviations are intentional. Thus, the
Defendants’ proposed construction is inconsistent with the ‘933 Patent’s specification.
The prosecution history also indicates that a person of ordinary skill in the art of
concrete construction would have understood “substantially planar” to include variations
from “flat” even if they are intentional. The patentee added the phrase “substantially planar
ends” to Claims 1 and 19 during the reexamination process to overcome rejections based
on Hrobin ‘969 and Guarriello ‘222. (Filing No. 92-4, at INT001168.) The patentee pointed
only to Figures 1 and 2 of the ‘933 Patent to support inserting “substantially planar ends”
into the ‘933 Patent. (Filing No. 92-4, at INT001069.) The patentee indicated, however,
that using the term “substantially” to modify “planar” was appropriate because “the end[s]
of the forms are not completely planar since they have interlocking tongues and grooves
and the statement that the end projection was flush [with the end plane of the form] would
have to be modified to state that it is flush with ‘at least [a] portion’ of the end plane.”
(Filing No. 92-4, at INT001088.) Thus, the patentee indicated during the prosecution of the
28

‘933 Patent that the “ends” are not “completely planar” due to intentionally created “tongues
and grooves.”
The Defendants’ only other argument in support of their proposed construction is
that “substantially” should be construed the same way for both the “substantially the same
dimension” and the “substantially planar ends” limitation. However, as explained above,
nothing in the intrinsic evidence indicates that “substantially” was used consistently
between claim limitations, or that it was meant to “impose a precise numeric constraint” on
“planar ends.” Therefore, the Court will not impose such a constraint. See Playtex, 400
F.3d at 907.
The Federal Circuit has “held that . . . ‘words of approximation, such as “generally”
and “substantially,” are descriptive terms “commonly used in patent claims to avoid a strict
numerical boundary to [a] specified parameter.”’” Playtex, 400 F.3d at 907; see also Oxford
University Press, The New Oxford American Dictionary, 1696 (Elizabeth J. Jewell & Frank
Abate eds., 2001) (“sub!stan!tial!ly . . . 1 to a great or significant extent . . . 2 for the most
part; essentially “); Filing No. 92-7, at INT001785. A jury will understand this non-technical
term, and the Court will not attempt to paraphrase it for them. See Reedhycalog, 2007 WL
3001423, *4 (“A lay jury will understand what ‘substantially’ means, and therefore the term
does not require construction.”); cf. U.S. Surgical Corp., 103 F.3d at 1568 (“Claim
construction is a matter . . . to clarify and when necessary to explain what the patentee
covered by the claims . . . It is not an obligatory exercise in redundancy.”); IPPV Enters.,
106 F. Supp. 2d at 601 (“The court will base the jury instructions in this case on the
construction of the claims adopted herein.”). The term “planar,” however, may confuse the

29

jury, and the parties do not dispute that “planar” means “flat.” Therefore, the Court will
construe “planar” to mean “flat.”
CONCLUSION
In summary, the Court adopts the existing wording of the claims, except the
following construction shall apply:
In Claim 1, “adjacent” in the phrase “wherein within each said pattern said recess
of one row is adjacent said projection of the other row” is construed to mean: wherein
within each said pattern said recess of one row is next to said projection of the other row
on the same panel or sidewall.
In Claim 19, “adjacent” in the phrase “wherein said recess of one row in each said
pattern is adjacent said projection of the other row in the same pattern” is construed to
mean: wherein said recess of one row in each said pattern is next to said projection of the
other row on the same panel or sidewall in the same pattern.
In Claims 1 and 19, “substantially the same dimension” is construed to mean: the
same measurable length, breadth, area, and volume, with only minor variations in
dimension of up to about 10%.
In Claims 1 and 19, “substantially planar ends” is construed to mean: substantially
flat ends.
Accordingly,
IT IS ORDERED:
1.

The Court construes the term “adjacent” to mean “next to . . . on the same
panel or sidewall”;

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2.

The Court construes the term “substantially the same dimension” to mean
“have the same measurable length, breadth, area and volume, with only
minor variations in dimension of up to about 10%,” and

3.

The Court construes the term “substantially planar ends” to mean
“substantially flat ends.”

DATED this 19th day of July, 2012.

BY THE COURT:

s/Laurie Smith Camp
Chief United States District Judge

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