Integrated Liner Technologies, Inc. v. Specialty Silicone Products, Inc. et al

Filing 62

MEMORANDUM-DECISION and ORDER - That Magistrate Judge Peebles' April 7, 2011 Report-Recommendation (Dkt. No. 55) is ADOPTED in its entirety. That the parties notify Magistrate Judge Peebles in order to schedule further proceedings in accordance with this order. Signed by Judge Gary L. Sharpe on 10/26/2011. (Attachments: # 1 Report-Recommendation) (jel, )

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF NEW YORK

INTEGRATED LINER TECHNOLOGIES,
INC.,
Plaintiff,

Civil Action No.
1:09-CV-1285 (GLS/DEP)

v.

SPECIALITY SILICONE PRODUCTS, INC.
and SSP, INC.,
Defendants.

APPEARANCES:

OF COUNSEL:

FOR PLAINTIFF:
HESLIN, ROTHENBERG LAW FIRM DAVID P. MIRANDA, ESQ.
5 Columbia Circle
BRETT M. HUTTON, ESQ.
Albany, NY 12203
FOR DEFENDANTS:
CERMAK, KENEALY LAW FIRM
515 East Braddock Road
Suite B
Alexandria, VA 22314

AJIT J. VAIDYA, ESQ.

STOCKLI, GREENE LAW FIRM
90 State Street
Albany, NY 12207

MARY ELIZABETH SLEVIN, ESQ.

DAVID E. PEEBLES
U.S. MAGISTRATE JUDGE

REPORT AND RECOMMENDATION
Plaintiff Integrated Liner Technologies, Inc. (“ILT”), an Albany, New
York based commercial manufacturer of caps for use to seal containers
designed primarily to house liquid medial or scientific samples for testing,
has commenced this patent infringement suit against defendants
Speciality Silicone Products, Inc. and SSP, Inc. (collectively, “SSP”), both
of which are headquartered in Ballston Spa, New York and together
compete with ILT.1 At issue in the action are two related patents, a
product patent and a method patent, both of which concern open-top caps
with elastomer septums bonded to the caps on the underside surface.
At the direction of the court the parties conferred and were able to
agree on the construction of certain of the terms contained within the
claims of the two patents in suit. Despite those efforts, however, four
claim terms remain in dispute, and the parties have requested the court’s
assistance in construing those four terms. In light of that request, District
Judge Gary L. Sharpe has referred the matter to me for issuance of a

1

Plaintiff’s complaint also named a third defendant, Streck, Inc.
Subsequent to commencement of the action, however, plaintiff filed a notice of
voluntary dismissal of claims against that defendant, without prejudice, pursuant to
Rule 41(a)(1) of the Federal Rules of Civil Procedure. See Dkt. Nos. 15, 16.
2

report and recommendation regarding claim construction. The following
constitutes my reported findings and recommendations, which are based
upon comprehensive submissions from the parties and a claim
construction hearing that was conducted on February 15, 2011.
I.

BACKGROUND
At issue in this case are two patents, both of which list Alan R. Gee,

William R. Delaney, and Paul M. Petrosino as inventors and have been
assigned to ILT. The patents in suit relate to construction of a cap
designed to allow the deposit and withdrawal of a sample into a bottle,
vial, or other similar type container by way of a needle inserted through
the septum of the cap. The two patents are related, and both trace their
roots to a patent application filed on December 5, 1994. The
specifications and drawings contained in both patents are virtually
identical.
The technology disclosed in the two patents encompasses the
bonding of an elastomer, such as a silicone rubber, to the inside surface
of an inert plastic or metal cap without use of an adhesive or other
substance potentially capable of contaminating any samples to be held in
the vessel. The first of those patents, No. 5,647,939 (the “’939 Patent”),

3

was issued by the United States Patent and Trademark Office (“PTO”) on
July 15, 1997 and is entitled “Method of Bonding a Cured Elastomer to
Plastic and Metal Surfaces”. The second, No. 6,234,335 (the “’335
Patent”), was issued on May 22, 2001 and is entitled “Sealable Container
and Open Top Cap with Directly Bonded Elastomer Septum”. The caps
associated with ILT’s patented technology are depicted in figures 1 (top
view) and 1A (cross section) of the ’939 and ’335 Patents, as follows:

4

The ’939 Patent discloses a method of securing an elastomer to a
plastic or metal cap, teaching a method of bonding which entails ionization
of the two surfaces to be bonded – the elastomer and the inner surface of
the plastic or metal cap – and applying pressure to form a direct bond
between the two surfaces. ’939 Patent at 1:6-7; see also id. at 2:52-65.
According to the patent, the required ionization can be accomplished
through a variety of methods, including by treatment “with a flame, corona
or plasma discharge as well as by radiation or high intensity UV light.” Id.
at 2:66-67. The ’335 Patent, the sister product patent, describes the
finished cap resulting from use of the ionization bonding method disclosed
5

in the ’939 Patent.
II.

DISCUSSION
A.

Defendants’ Motion To Strike

Before addressing the issue of claim construction, as a preliminary
matter I must first consider a motion by SSP to strike portions of a
declaration offered by ILT’s expert, Patrick T. Mather, Ph. D. Dr. Mather
did not offer opinions in support of plaintiff’s opening Markman2 brief. He
did, however, provide a declaration in response to defendants’ opening
submission. See Dkt. No. 49-1. In its motion, SSP asserts that certain
portions of that declaration set forth opinions that are not strictly limited to
rebutting opinions offered by SSP’s expert, R. J. Del Vecchio, and
therefore should have been disclosed as part of ILT’s initial submission.
Dkt. No. 45-3.
The protocol for identifying disputed claim terms and presenting the
parties’ positions regarding those terms to the court was specified in an
order issued on September 17, 2010. Dkt. No. 43. That order required,
inter alia, the simultaneous exchange of proposed constructions of any
disputed term,
2

Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir.
1995), aff’d, 517 U.S. 370, 116 S. Ct. (1996).
6

together with an identification of all references from
the intrinsic evidence that supports that
construction, and the identification of any extrinsic
evidence known to the party on which it intends to
rely either to support its proposed construction or
to oppose the other party’s proposed construction,
including but not limited to, as permitted by law,
dictionary definitions, citations to authoritative
treatises and prior art, and testimony of all
witnesses including experts.
September 17, 2010 Order (Dkt. No. 43) ¶ 6 (Emphasis added). The
procedures specified envisioned an orderly presentation of the parties’
positions to the court.
Plaintiff’s initial Markman submission included various items of
extrinsic evidence, but did not incorporate an expert declaration. See Dkt.
No. 46. Defendants’ initial offering, in contrast, did contain a declaration
in which their expert offered opinions concerning the four patent claim
terms in issue. Dkt. No. 45-3. Under the guise of rebutting that
declaration, ILT later submitted to the court a declaration from Dr. Mather,
its expert. Dkt. No. 49-1.
Upon review of Dr. Mather’s declaration, I find that certain portions
set forth opinions that could appropriately be viewed as rebutting those of
defendants’ expert. Many of Dr. Mather’s views, however, are not and
should have been disclosed with plaintiff’s opening submission. For this
7

reason, I will recommend that paragraphs 23, 26, 28, 33, 34, and 36 of the
Mather Declaration be stricken. Vona v. Schindler Elevator Corp. Mgmt.,
No. 05-CV-0131, 2009 WL 2152309, *7-8 (W.D.N.Y. Jul. 14, 2009); see
also Oceans Cuisine, Ltd. v. Fishery Products Int’l, Inc., No. 05-CV-3613,
2006 WL 1071578, at *5-6 (E.D.N.Y. Apr. 21, 2006).
B.

Claim Terms In Dispute

ILT alleges the defendants infringed eighteen of the twenty-one
claims contained within the ’335 patent and nineteen of twenty-four claims
of the ’939 Patent. Claim one of the ’335 Patent serves as a useful
backdrop for analysis of the parties’ claim construction dispute. That
portion of the ’335 Patent claims:
1.

A sealing element comprising:

a cap having a top with an opening therein; and
a septum formed separately from said cap and
comprising an elastomer, the elastomer having an
ionized bonding surface directly bonded to an
ionized interior surface of said cap thereby
occluding the opening in said top and wherein
there is no layer of adhesive or plastic material
between said bonding surface and said interior
surface.
’335 Patent, Claim 1. The method corresponding to that product is
described in claim 1 of the ’935 Patent. Certain of the subsequent

8

dependent claims in both patents provide for the addition of a primer to
the interior cap surface prior to bonding. See, e.g., ’335 Patent, Claims 47; ’939 Patent Claims 3-6.
As a pre-cursor to adjudication of the various infringement claims
and defenses raised in the action, the parties have conferred and settled
on definitions to be applied to certain claim terms within the two patents,
including “in contact”, “intervening layer”, and “cured
elastomer”/“elastomer”. They differ, however, as to the proper definitions
to be attributed to the terms “primer”, “adhesive”, “bond directly”/“directly
bonded”, and “layer”.
C.

Claim Construction: Legal Framework

Patent claim construction represents an issue of law to be decided
by the court. Markman, 52 F.3d at 979; Pitney Bowes, Inc. v. HewlettPackard Co., 182 F.3d 1298, 1304 (Fed. Cir. 1999) (citing Markman).
When engaged in patent construction, a court must define claim terms as
one of ordinary skill in the relevant art would understand and interpret
them in the context of the entire patent, including the specification.
Markman, 52 F.3d at 986; see also Netcraft Corp. v. eBay, Inc., 549 F.3d
1394, 1396-97 (Fed. Cir. 2008); K-2 Corp. v. Salomon S.A.,191 F.3d

9

1356, 1365 (Fed. Cir. 1999).
1.

General Claim Construction Principles

Perhaps the most comprehensive discourse to date regarding the
claim construction calculus is found in the Federal Circuit’s en banc
decision in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), cert.
denied, 546 U.S. 1170, 126 S. Ct. 1332 (2006). In Phillips, though with
extensive illuminating discussion regarding the relative importance of
intrinsic and extrinsic evidence, the Federal Circuit in essence endorsed
its earlier decision in Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576
(Fed. Cir. 1996), previously regarded by the courts and patent
practitioners as defining the contours of the claim construction inquiry.
Phillips, 415 F.3d at 1324.
The principal teaching of Phillips – and not a significant departure
from earlier claim construction jurisprudence – is that the claims of a
patent define the scope of protection afforded to the inventor. Phillips,
415 F.3d at 1312. It therefore follows that the language of a claim itself
generally provides the most definitive source of enlightenment concerning
the intended meaning of disputed terms. Vitronics, 90 F.3d at 1582.
Words contained within a patent normally should be given their ordinary

10

and customary meaning, considered from the perspective of a person of
ordinary skill in the art in question at the time of the invention – that is, the
effective filing date of the patent application. Phillips, 415 F.3d at 1313
(citing, inter alia, Innova/Pure Water, Inc. v. Safari Water Filtration Sys.,
Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004)).
While it is true that the words of a patent claim will generally control,
they should not be interpreted in isolation, in disregard of other portions of
the patent; instead “the person of ordinary skill in the art is deemed to
read the claim term not only in the context of the particular claim in which
the disputed term appears, but in the context of the entire patent,
including the specification.” Phillips, 415 F.3d at 1313. In this regard a
patent specification, which some liken to an internal dictionary, must be
carefully reviewed to determine whether, for example, the inventor has
used a particular term in a manner inconsistent with its ordinary meaning.
Id. at 1313-14; see also Vitronics, 90 F.3d at 1582 (citing Markman, 52
F.3d at 979).
A patent’s specification often constitutes the “single best guide to
the meaning of a disputed term.” Vitronics, 90 F.3d at 1582. When
resorting to a patent’s specification for guidance with respect to disputed

11

claim terms one must consider it as a whole, and all portions should be
read in a manner that renders the patent internally consistent. Budde v.
Harley-Davidson, Inc., 250 F.3d 1369, 1379-80 (Fed. Cir. 2001). “[W]hile
it is true that claims are to be interpreted in light of the specification and
with a view to ascertaining the invention, it does not follow that limitations
from the specification may be read into the claims[,]” Sjolund v. Musland,
847 F.2d 1573, 1581 (Fed. Cir. 1988) (emphasis in original), “[n]or should
particular embodiments in the specification be read into the claims; the
general rule is that the claims of a patent are not limited to the preferred
embodiment.” Cornell Univ. v. Hewlett-Packard Co., 313 F. Supp. 2d 114,
126 (N.D.N.Y. 2004) (Mordue, C.J.) (citing, inter alia, Texas Digital Sys.,
Inc. v. Telegenix, Inc., 308 F.3d 1193, 1204 (Fed. Cir. 2002)).
In addition to the claim terms themselves and the patent’s
specification, a third category of relevant intrinsic evidence worthy of
consideration is the history surrounding prosecution of the patent. That
history, which is customarily though not always offered to assist a court in
fulfilling its claim construction responsibilities, is generally comprised of
the complete record of proceedings before the PTO including,
significantly, any express representations made by the applicant regarding

12

the intended scope of the claims being made, and an examination of the
prior art.3 Vitronics, 90 F.3d at 1582-83. Such evidence, which typically
chronicles the dialogue between the inventor and the PTO leading up to
the issuance of a patent and thus can act as a reliable indicator of any
limitations or concessions on the part of the applicant, oftentimes proves
highly instructive on the issue of claim construction. Philips, 415 F.3d at
1313 (“We cannot look at the ordinary meaning of the term . . . in a
vacuum. Rather, we must look at the ordinary meaning in the context of
the written description and the prosecution history.”) (quoting Medrad, Inc.
v. MRI Devices Corp., 401 F.3d 1313, 1319 (Fed. Cir. 2005)).
If analysis of the available intrinsic evidence resolves a perceived
ambiguity in a disputed claim term, then the inquiry is ended. Vitronics, 90
F.3d at 1583. Where, on the other hand, there remains uncertainty
regarding a claim after consideration of all intrinsic evidence, the court
may then turn to examination of such available extrinsic sources as expert
3

In addition to prosecuting their two patent applications before the PTO,
the inventors also applied for a European patent based upon the December 5, 1994
PTO application. That application resulted in the issuance of European Patent No.
0797529 on June 26, 2003. Statements made by the inventors while prosecuting their
related European patent are potentially relevant to the issue of claim construction.
See Glaxo Group, Ltd. v. Ranbaxy Pharm., Inc., 626 F.3d 1333, 1337 (Fed. Cir. 2001);
Abbott Labs v. Sandoz, Inc., 566 F.3d 1282, 1290 (Fed. Cir. 2009); Alloc, Inc. v. Int.’l
Trade Com’n., 342 F.3d 1361 (Fed Cir. 2003). cert. denied, 541 U.S. 1063, 124 S. Ct.
2390 (2004).
13

testimony, inventor testimony, dictionaries, and technical treatises and
articles, for guidance in reconciling any conflicting intrinsic indicators. Id.
at 1584. It should be noted, however, that extrinsic evidence may only be
used to aid the court in understanding patent claims and cannot be relied
upon to justify any departure from or contradiction of the actual claim
language employed by the applicant. Id. To assist in resolving an
ambiguity, in its discretion, a court may admit and rely on prior art,
whether or not it is cited in the specification or file history. Id. at 1584-85.
Prior art and dictionaries, as publicly accessible objective information, are
for obvious reasons preferable to expert testimony as tools for resolving
ambiguity. Id. at 1585; see also Texas Digital Sys., 308 F.3d at 1202-03.
Ultimately, interpretation of the terms of a patent claim can only be
determined with a full understanding of what the inventor actually invented
and intended to encompass within the scope of his or her patent claims.
Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed.
Cir. 1998). For this reason, when inventors distinguish their invention
from prior art, that prior art is properly excluded from coverage of the
patent’s claims. Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc., 267 F.
Supp. 2d 533, 543 (N.D. W.Va. 2003) (citing SciMed Life Sys., Inc. v.

14

Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343 (Fed. Cir.
2001)).
2.

Expert Opinions

The parties have offered declarations from experts for the court’s
use in the claim construction exercise. In Phillips, the Federal Circuit
approved of the limited use of extrinsic evidence, including expert
testimony, to the extent it “can shed useful light on the relevant art.”
Phillips, 415 F.3d at 1318 (quoting C.R. Bard, Inc. v U.S. Surgical Corp.,
388 F.3d 858, 862 (Fed. Cir. 2004)). In its decision in that case the court
held that
extrinsic evidence in the form of expert testimony can be
useful to a court for a variety of purposes, such as to provide
background on the technology at issue, to explain how an
invention works, to ensure that the court’s understanding of
the technical aspects of the patent is consistent with that of a
person of skill in the art, or to establish that a particular term in
the patent or the prior art has a particular meaning the
pertinent field.
Phillips, 415 F.3d at 1318 (citing Pitney Bowes, 182 F.3d at 1308-09); Key
Pharms. v. Hercon Labs. Corp., 161 F.3d 709, 716 (Fed. Cir. 1998)).
More recent cases from the Federal Circuit reinforce the court’s position
regarding reliance upon expert testimony to the extent it is found to be
helpful. See, e.g., Spansion, Inc. v. Int’l Trade Comm’n, 629 F.3d 1331,
15

1345 (Fed. Cir. 2010); DePuy Spine, Inc. v. Medtronic Sofamor Danek,
Inc., 567 F.3d 1314, 1324 (Fed. Cir. 2009); Serio-US Indus., Inc. v. Plastic
Recovery Technologies Corp., 459 F.3d 1311, 1319 (Fed. Cir. 2006);
Network Commerce, Inc. v. Microsoft Corp., 422 F.3d 1353, 1361 (Fed.
Cir. 2005); see also U.S. Phillips Corp. v. Iwasaki Elec. Co., No. 03CIV.
0172, 2006 WL 20504, at *1 (S.D.N.Y. Jan. 3, 2006); Pass & Seymour,
Inc. v. Hubbell Inc., No. 5:07-CV-00945, 2009 WL 7296903, at *8
(N.D.N.Y. Dec. 30, 2009) (Peebles, M.J.), adopted as modified, 2011 WL
32433 (N.D.N.Y. Jan. 5, 2011) (Mordue, C.J.).
As the Federal Circuit has warned, however, any expert opinions
that are unsupported or inconsistent with the claims themselves, the
written description, or the prosecution history, are not useful and
accordingly should be discounted. Phillips, 415 F.3d at 1318-19. In the
end, the decision of whether expert testimony is needed rests with the trial
court’s discretion. Inpro II Licensing S.A.R.L. v. T-Mobile USA, Inc., 450
F.3d 1350, 1357 (Fed. Cir. 2006) (citing Key Pharms., 161 F.3d at 716).
Mindful of these principles and the limited usefulness of expert
testimony, I have considered the proffered expert opinions to the extent I
have found them to be of assistance in understanding the prior art,

16

technology, and patent specifications.
3.

Person Of Ordinary Skill In The Art

Before turning to the task of claim construction, I must determine the
relevant prism through which the patents in suit should be viewed. The
court’s assigned task when addressing claim construction is to ascertain
how a person of ordinary skill in the art would have understood the
disputed claim terms at the time of the invention. Markman, 52 F.3d at
986. Accordingly, patent claims must be interpreted not through the eyes
of the court, nor those of any proffered experts, but rather from the
standpoint of a person skilled in the relevant art. Interactive Gift Express,
Inc. v. Compuserve Inc., 256 F.3d 1323, 1332 (Fed. Cir. 2001). In
fashioning the hypothetical construct of that person of ordinary skill in the
art, a court should consider the educational level of the inventor, the type
of issues encountered in the art, the prior art solutions to problems
experienced, the rapidity with which innovations are made in the subject
area, the sophistication of the technology involved, and the educational
level of workers in the field. Helifix Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339,
1347 (Fed. Cir. 2000) (citation omitted).
The parties appear to be in agreement concerning the definition of a

17

person of ordinary skill in the art. Having considered their submissions
and found the position espoused by both to be reasonable, I recommend
that a person of ordinary skill in the art in this instance be defined as “a
person with an undergraduate degree in chemistry, materials science or a
related field with at least three to five years of practical experience of a
field in applied rubber technology.”
D.

Construction of Disputed Terms
1.

Primer

The first of the four terms in issue is “primer”. Plaintiff proposes that
the term be construed as “a substance that enhances a bond.” Defendant
counters with a more limited definition, interpreting the word to mean “a
dilute generally single component solution of a non-adhesive silane
coupling agent or non-adhesive reactive silane that is applied to a bonding
surface in order to enhance bond strength.”
The term primer is introduced in the ’335 patent at claim four, a
dependent claim which recites “[t]he sealing element of claim 1 wherein
said ionized interior surface is wetted with a primer prior to being
bonded.”4 As can be seen, the claim itself does not identify a specific
4

The term “primer” is correspondingly referenced in claims 3 through 6 of
the ’939 Patent.
18

primer, nor does it discuss the contemplated composition of the primer.
Claim 5 of the ’335 Patent narrows the primer referenced in claim 4 as
comprising “one of a silane coupling agent and a reactive silane.”
Similarly, claim 5 of the ’939 Patent restricts the primer referenced in claim
3 thereof as comprising “approximately a 1% solution of an aminosilane.” 5
The term primer is addressed in the specification of both patents in
suit. The specification of the ’335 Patent, for example, provides as
follows:
Optional surface treatments may be applied to the plastic after
ionization of the surface, and before contact, in order to
enhance the resulting bond. Examples of such surface
treatments or primers include silane coupling agents and
reactive silanes. The use of these materials to modify
adhesive bonding is discussed in "Silane Coupling Agents" by
E. P. Plueddemann, Q.D.412 S6P5 1982 ISBN 0-30640957-7. However, this work covers the use of such agents in
bonding of inorganic materials, such as glass fibers, in a
matrix of thermoset or uncured resin. A preferred primer
includes approximately 1/4-2% isopropanol solution of an
aminosilane of formula:
5

Claim 6 further restricts that definition, providing the aminosilane
specified in claim 5 “is selected from the group consisting of:
(CH30)3 Si(CH2)3NHCH2CH2NH2)
and
N-(2-aminoethyl)-3-aminopropyltrimethoxysilane.”

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(CH30)3 Si(CH2)3NHCH2CH2NH2)
Or
N-(2-aminoethyl)-3-aminopropyltrimethoxysilane
It is believed that the primer enhances the
bond strength and increases the time allowed for
bonding after ionization of the surface. Utilization
of the primer is preferred when more than 1 hour
will elapse between ionization of the plastic and
contact with the activated surface of the elastomer.
It is believed that the silane occupies the reactive
sites on the surface of the plastic and provides a
more stable reactive species for later reaction with
the surface of the activated elastomer.
’335 Patent, 3:39-65; see also ’939 Patent, 3:31-56. As can be seen, the
patent specification describes the intended function of the primer as
enhancing the resulting bond and increasing the time allowed after
ionization for bonding of the plastic or metal inner-surface of the cap.
While a preferred primer is referenced, nothing within the specification
reflects an intent on the part of the inventors to limit the composition of the
primers referenced to the composition disclosed in the example.
Defendants’ own expert acknowledges that the term primer
generically can include many different types of compositions with varied
numbers of components, depending upon the intended application. See
Del Vecchio Decl. (Dkt. No. 45-3) ¶ 26; see also Mather Decl. (Dkt. No.
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49-1) ¶ 24. In an effort to narrow this broad definition of primer in this
instance, defendants point to language in the specification and the
examples as suggesting an intent on the part of the inventors to restrict
usage of the term to a dilute, single component substance.6 See Del
Vecchio Decl. (Dkt. No. 45-3) ¶¶ 29, 36. Absent a clear showing of intent
on the part of the inventors to cabin the term, however, reliance upon
examples cited within a patent’s specifications, or even a preferred
embodiment, to limit a claim term is improper and should be rejected.
Cornell Univ., 313 F. Supp. 2d at 126.
Although defendants’ proposed definition of the term “primer” is
unduly narrow, by the same token consideration of the available intrinsic
evidence, including the two patent specifications, reflect that plaintiff’s
proposed definition of the term “primer” is too broad and cannot withstand
scrutiny. Like any other patent term, the word “primer” as utilized in the
two patents in suit cannot be construed in a vacuum, but instead must be

6

The preferred primer disclosed in the specifications of the two patents
consists of a single silane coupling agent. ’335 Patent 3:48-55; ’939 Patent 3:41-47.
Similarly, the three examples sited in the specifications represent dilute, single
component silane coupling agents. Del Vecchio Decl. (Dkt. No. 45-3) ¶ 30. Examples
one and three cited in the two patents reference a primer consisting of a one percent
solution N-(2-aminoethyl)-3-aminopropyltrimethoxysilane. Id. Example 2 describes
utilization of a one percent solution of a single silane coupling agent. Id. No other
primers are referenced in the specification of either patent in suit. Id.
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considered in the light of the entirety of the patents. Phillips, 415 F.3d at
1313. Both patents note that “[t]he conventional method of attaching a
liner or septum onto a cap utilizes some type of adhesive, which may
come in contact with, and potentially contaminate, [a] sample.” ’335
Patent, 1:47-49; 939 Patent 1:51-53. The patents go on to identify “a need
for a cap having an inert elastomer bonded directly to the interior of the
cap without the use of adhesive or thin layers of plastic.” ’335 Patent,
2:30-32; 939 Patent, 2:26-28. This theme of avoiding potential
contamination resulting from the use of adhesives is also prominently
referenced during the prosecution history associated with the two patents.
From this it seems clear that a proper construction of the term “primer”
must exclude substances that can be characterized as adhesives.
Having carefully considered the competing definitions proposed by
the parties and applied generally accepted principles of construction, I
recommend that the term “primer” be construed as “a non-adhesive
substance utilized as a surface treatment that enhances bond strength.”
2.

Adhesive

Despite the fact that it is a widely used and generally understood
term, the parties next disagree over the proper construction of the word
22

“adhesive” as utilized in the ’335 and ’939 Patents. Plaintiff urges the
court to define that term as “a substance that bonds two or more solids so
that they act or can be used as a single piece.” For their part, defendants
suggest that the term be construed to mean “a multi-component gap filing
mixture that is capable of bonding two surfaces.”
The two patents themselves provide little insight as to the intended
meaning of “adhesive”, and whether in this context the definition should
vary from the generally accepted understanding of the term. Claims 1, 6,
and 30 of the ’335 Patent specifically exclude a layer of adhesive from
coming between the elastomer’s bonding surface and interior surface of
the sealable container cap discussed in the patent. Claim 1 of the ’939
Patent contains similar language. The specifications of the two patents
provide no guidance, nor do they disclose any intent on the part of the
inventors to deviate from the generally accepted meaning of the term.
Dictionary definitions of the term adhesive, though variously worded,
are generally consistent in their application. One authoritative dictionary
of scientific and technical terms defines the term as follows:
A substance used to bond two or more solids so
that they act or can be used as a single piece;
examples are resins, formaldehydes, glue, paste,
cement, putty, and polyvinyl resin emulsions.
23

Hutton Decl. (Dkt. No. 46-1) Exh. L. (MCGRAW -HILL DICTIONARY OF
SCIENTIFIC AND TECHNICAL TERMS 34 (4th ed. 1989)). Another often-cited
source defines the term to mean, in relevant part,
[a]ny substance, inorganic or organic, natural or
synthetic, that is capable of bonding other
substances together by surface attachment.
Richard J. Lewis, Sr., HAWLEY’S CONDENSED CHEMICAL DICTIONARY 25
(15th ed.) .
SSP maintains, as it did with regard to the term “primer”, that resort
to generally accepted broad definitions does not take into account the
intent of the inventors, as disclosed in their patent. SSP notes, for
example, that plaintiff’s proposed definition does not allow for the need to
differentiate between a primer and an adhesive and the potential for
contamination associated with the latter, and additionally overlooks a
definition of the term contained in the publication cited by the inventors in
their patents.
It is true that plaintiff’s patents cite Silane Coupling Agents, a
publication authored by Edwin P. Plueddemann. See ’335 Patent, 3:4446; 939 Patent 3:36-38. The reference to that treatise, however, concerns
the use of materials such as silane coupling agents and reactive silanes
24

as primers to enhance bondings.7 Nonetheless, defendants contend that
because the two patents themselves cite the Plueddemann publication, it
should also be looked to for a definition of “adhesive”. See Defendants’
Brief (Dkt. No. 45) Exh. D. That publication defines the term, in relevant
part, as
a gap-filling polymer used to bond solid adherents
such as metals, ceramics, or wood, whose solid
surfaces cannot conform to one another on
contact.
Id. at § 1.2.
The parties do not materially differ concerning the function to be
performed by the adhesive referenced in the two patents in suit. Critical to
the patents is the composition of the adhesive referenced, and the need to
distinguish between potentially contaminating adhesives on the one hand,
and primers on the other.8
As defendants’ expert notes, a person of ordinary skill in the art

7

According to defendants’ expert, silane coupling agents and reactive
silanes, described in the patents as primers, are often used in adhesive formulations.
Del Vecchio Decl. (Dkt. No. 45-3) ¶ 54.
8

It should be noted that a substance characterized by those of ordinary
skill in the art as an adhesive may be capable of bonding certain surfaces, and yet
incapable of forming a bond between others. See Second Del Vecchio Decl. (Dkt. No.
48-1) ¶ 25.
25

would know that adhesives commonly used in the rubber industry to bond
an elastomer to a substrate are always mixtures of multiple ingredients
which can include low molecular weight polymers, particulate reinforcing
agents such as carbon black, specific reagents which will form chemical
bonds, other types of chemicals that promote bonding, as well as
miscellaneous materials and a solvent. Del Vecchio Decl. (Dkt. No. 45-3)
¶ 54. The patents in suit, however, do not provide any basis for limiting
the term “adhesive” based upon chemical constituents.
Having considered the parties’ positions, I recommend that the term
“adhesive” be defined as “a substance that is capable of bonding two or
more solids together by surface attachment.”
3.

Bond Directly/Directly Bonded

The parties next request construction of two related terms. The first
is “directly bonded”, which is found in claims 1, 6, 8, and 20 of the ’335
Patent. The second is a slight variation of the first, “bond directly”, recited
in claims 1 and 18 of the ’939 Patent. While the parties agree that the two
phrases have the same meaning, they disagree concerning the
appropriate construction. Plaintiff urges the court to construe the two
terms as meaning that there can be “no layer of adhesive or plastic
26

material between bonded cap and septum”, while defendants assert that a
proper construction involves “two surfaces which are joined to each other
without the use of an intervening material.”
Determining the proper construction to be accorded to bond
directly/directly bonded and, as will be seen, “layer” presents no easy
task. Each party has proposed a construction which has something to
commend it. Yet, both are potentially problematic.
Addressing first defendants’ proposed definition, which would
eliminate the possibility of any material between the two surfaces to be
bonded, I note that nothing in the specification of either patent precludes
the presence of material between the two bonded surfaces other than an
adhesive or plastic material. The plain focus of the two patents in suit was
upon the potential contaminate effect of using an adhesive, and the
invention disclosed surrounds the use of ionization for bonding in lieu of a
potential contaminant. I also note that defendants’ proposed construction
eliminates the possibility of the use of a primer, despite the fact that
dependent claims within the two patents allow for the wetting of the
ionized interior surface of the cap with a primer, which would clearly
qualify as an intervening material. See, e.g., ’335 Patent Claims 4-7.

27

It is a well-accepted axiom of patent law that claim terms should be
interpreted in such a way as to harmonize claims; constructions that are
inconsistent with or exclude claims of the same or a related patent cannot
be correct. In re Katz Interactive Call Processing Patent Litigation, – F.3d
–, 2011 WL 607381, *14 (Fed. Cir. Feb. 18, 2011).
Plaintiff’s proposed construction fares no better. Plaintiff merely
proposes a definition that reiterates a concept spelled out in the phrase
which following bond directly/directly bonded, namely “without the use of
an intervening layer of adhesive or plastic material”, but does not further
illuminate what is meant by the concept of direct bonding. It is well
established that constructions that would render other language within a
claim superfluous or redundant are not generally favored. Becton,
Dickinson Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1257 (Fed.
Cir. 2010).
Having considered the intrinsic evidence, and in particular the
specifications of the two patents in suit, I conclude that bond
directly/directly bonded must be read hand-in-hand with layer, bearing in
mind the intent of the inventors and the manner in which they went about
distinguishing their invention from the prior art. While plaintiff’s proposed

28

definition of the two, in combination, suggests that their could be the
presence of some amount of adhesive between the two bonded surfaces,
provided that it did not constitute a layer covering the entire surface, the
patent specifications counsel otherwise. Those specifications focus upon
the potential contaminating effect of any amount of contaminates. The
’335 patent specification provides, for example, in relevant part as follows:
The conventional method of attaching a liner or
septum onto a cap utilizes some type of adhesive,
which may come in contact with, and potentially
contaminate, the sample. In this regard it should
be noted that even minor contamination may make
critical analytical analysis of pollutants difficult or
untrustworthy, since tests are commonly directed
towards the presence of pollutants at the level of
ppm (part per million) or even ppb (part per billion).
Moreover, the EPA specification of a silicone
rubber/Teflon septum presents further problems
since many adhesives simply do not work well with
silicone rubber. In addition, of those adhesives
compatible with silicone rubber, many are
thermoplastic adhesives which will not withstand
common cleaning methods, such as those
specified by the EPA cleaning standards.
’335 Patent 1:51-65; see also ’939 Patent 1:47-61 (emphasis added).
From this it seems clear the patentees considered that their invention
would not include any adhesive between the two bonded surfaces, and
that this was the intent of the following qualifying language, referencing an
29

intervening “layer”.
Consistent with the patent claim terms and specifications, I conclude
that “bond directly/directly bonded” should be construed to mean “joined
together through surface contact, potentially with the presence of an
intervening material”.
4.

Layer

Hand-in-hand with the notion of direct bonding is claim language
found in both patents in issue, providing that “there is no layer of adhesive
or plastic material between [the two surfaces to be bonded].” See, e.g.,
’335 Patent Claim 1; see also ’939 Patent Claim 1 (“without the use of an
intervening layer of adhesive or plastic material.”) The parties have
requested construction of the term “layer”. Their disagreement concerning
this term centers over the extent to which a material must cover a surface
in order to qualify as a layer.9 Plaintiff’s proposed definition provides that
a layer constitutes an “adhesive or plastic material covering a surface.”
Defendants counter that a layer should be construed as “a detectable

9

While the focus of the parties understandably is upon adhesives and
plastic materials as referenced in claims of each of the two patents, usage of the term
within the two patents, however, is not limited to those substances, and instead used
elsewhere in the patents as relating to other types of compositions. See, e.g., ’939
Patent, Claim 20 (“a layer of silicone rubber and a layer of polytetrafluoroethylene”);
’335 Patent at 4:28 and Fig. 2 (“thin layer of Teflon”).
30

quantity/amount of a material that is at least partially distributed on a
surface.”
It appears that the term layer, which is one of common usage, would
not have any specific meaning to one of ordinary skill in the art in the
context of the two patents. See Del Vecchio Decl. (Dkt. No. 43-5) ¶¶ 8588. Similarly, the patents in suit do not provide guidance concerning the
term or evidence any intent on the part of the inventors to deviate from the
generally accepted meaning of the term, nor apparently do the
prosecution histories associated with the two patents.
Although common dictionaries definition of the term “layer” vary
somewhat, they are generally consistent. One source defines the term, in
relevant part, to mean “a single thickness of a material covering a surface
or forming an overlying part or segment.” THE AMERICAN HERITAGE
DICTIONARY OF THE ENGLISH LANGUAGE 994 (4th ed. 2000). Another sets
forth the following definition: “a. one thickness, course or fold layer lying
over or under another; b. Stratum.” MERRIAM-WEBSTER COLLEGIATE
DICTIONARY 678 (9th ed. 1991) . Yet another dictionary definition of the
term is “a single thickness of something, such as a covering or coating on
a surface.” COLLINS ENGLISH DICTIONARY, http://www.collinslanguage.com

31

(site last visited April 4, 2011) (screen shot attached).
In this instance consideration of each of the patents as a whole
convinces me that the inventors did not utilize the term layer in the
traditional sense, in that they did not envision a substance spread over the
entirety of the two bonded surfaces. The term cannot be construed in a
vacuum; instead, its intended meaning can only be gleamed by looking
not only to the concept of bond directly/directly bonded, but the invention
itself as outlined in the specification. Here, it seems clear that the
patentees distinguished their invention from the prior art by noting that
there would not be a presence of any adhesive, a potential contaminant
between the two bonded surfaces. As was previously noted, the
specification clearly provides “that even minor contamination may make
critical analytical analysis of pollutants difficult or untrustworthy, since
tests are commonly directed towards the presence of pollutants at the
level of ppm (part per million) or even ppb (part per billion).” ’335 Patent
1:54-58; ’939 Patent 1:50-54. The definition proposed by the defendants
for the term “layer” is more consistent with this concept and fits better with
bond directly/directly bonded, giving full meaning to the balance of the
claims. Accordingly, I recommend that “layer” be construed as “a

32

detectable quantity of a material that is at least partially distributed on a
surface.”
III.

SUMMARY AND RECOMMENDATION
The two patents in suit involve relatively simply concepts, products

and methods described in terms, many of which are readily
understandable without the need for technical or expert assistance and
further refinement. Having carefully considered the patents in suit, the
arguments of the parties, and the relevant and available data to inform the
court’s analysis, it is hereby respectfully
RECOMMENDED, that paragraphs 23, 26, 28, 33, 34, and 36 of the
Declaration of Patrick T. Mather, Ph. D., dated January 28, 2011 be
STRICKEN; and it is further
RECOMMENDED that the court affix the following meanings to the
four claim terms in dispute.
Disputed Term

Proposed Construction

primer

a non-adhesive substance utilized
as a surface treatment that
enhances bond strength

adhesive

a substance that is capable of
bonding two or more solids
together by surface attachment
33

bond directly/directly bonded

joined together through surface
contact, potentially with the
presence of an intervening material

layer

a detectable quantity of a material
that is at least partially distributed
on a surface.

NOTICE: Pursuant to 28 U.S.C. § 636(b)(1), the parties may lodge
written objections to the foregoing report. Such objections must be filed
with the clerk of the court within FOURTEEN days of service of this report.
FAILURE TO SO OBJECT TO THIS REPORT WILL PRECLUDE
APPELLATE REVIEW. 28 U.S.C. § 636(b)(1); Fed. R. Civ. P. 6(a), 6(d),
72; Roldan v. Racette, 984 F.2d 85 (2d Cir. 1993).
It is hereby ORDERED that the clerk of the court serve a copy of this
report and recommendation upon the parties in accordance with this
court’s local rules.

Dated:

April 7, 2011
Syracuse, NY

34

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lax

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laxative
lay

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1. a single thickness of something, such as a cover or a coating
on a surface,

lay
lay
lay

2. a laying hen,

lay aside
lay down
lay figure
lay in
lay into
lay off
lay on
lay out

3. (HoRTIcUlTURe ) a shoot that forms its own root while still
attached to the parent plant,
Vb

to form or make a layer or layers,
From lay1

lay reader
lay up
lay-by
layabout
layer
layette

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laywoman
laze

lb
lbw
lc
LCD
LCM
lcm
LEA
lea
leach
lead
lead
lead off
lead on
lead pencil

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