PRECISION FABRICS GROUP, INC. v. TIETEX INTERNATIONAL, LTD.

Filing 127

MEMORANDUM ORDER Signed by JUDGE THOMAS D. SCHROEDER on 1/14/2016. For the reasons stated herein, the Motion for Reconsideration filed by TIETEX INTERNATIONAL, LTD. ( 93 in 1:13cv645 and 63 in 1:14cv650) is DENIED. Associated Cases: 1:13cv645, 1:14cv650(Engle, Anita)

IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF NORTH CAROLINA
PRECISION FABRICS GROUP, INC.,

)
)
Plaintiff,
)
)
v.
)
)
TIETEX INTERNATIONAL, LTD.,
)
)
Defendant.
)
_________________________________)
)
PRECISION FABRICS GROUP, INC., )
)
Plaintiff,
)
)
v.
)
)
TIETEX INTERNATIONAL, LTD.,
)
)
Defendant.
)

1:13cv645

1:14cv650

MEMORANDUM ORDER
THOMAS D. SCHROEDER, District Judge.
These consolidated patent cases turn on the parties’ disputed
construction of the term “intumescent” appearing in the claims of
U.S. Patent Nos. 8,796,162 (the ’162 Patent) and 8,501,639 (the
’639 Patent) held by Plaintiff Precision Fabrics Group, Inc.
(“PFG”). 1

PFG alleges that Defendant Tietex International, Ltd.

(“Tietex”) is infringing the ‘162 and ‘639 Patents.

Tietex has

denied infringement and asserted various counterclaims.

1

Case number 1:13cv645 involves the ’639 patent; case number 1:14cv650
involves the ’162 patent.
The parties have agreed that the claim
construction for the ’639 patent will apply to the ’162 patent, given
their similarity. (Doc. 25.) All citations are to the record in case
number 1:13cv645, unless otherwise noted.

On January 15, 2015, after briefing and a hearing, the court
issued a claim construction order (Doc. 57), construing the term
“intumescent” to mean “a substance that swells and chars upon
exposure to heat or flame.”
to reconsider that order.

(Doc. 57 at 20–21.)
(Doc. 93.)

Tietex now moves

The motion has been fully

briefed and is now ripe for decision. The arguments are adequately
set forth in the briefing, and thus a further hearing will not aid
the decisional process.

For the reasons stated herein, the motion

will be denied.
I.

BACKGROUND
The ’162 and ’639 patents both relate to lightweight fabric

that is thermally protective and flame retardant.

(Doc. 47-2 at

3 (’162 Patent) col. 1, ll. 15–23; Doc. 37-1 at 2 (’639 Patent)
col. 1, ll. 17–24.)
stitch-bonded;
comprising

an

this

The fabric is single-layer, non-woven, and
“substrate”

“intumescent,

flame

is

treated

retardant

with

a

finish

coating.”

(’162

Patent col. 12, ll. 7–20; ’639 Patent col. 12, ll. 47-65.)

The

parties initially agreed on the meaning of several terms used in
the patents, including “flame retardant” and “finish.”
24 at 1.)

(See Doc.

They disagreed, however, as to the meaning of the term

“intumescent.”

(See id. at 3–7.)

PFG argued that “intumescent” should be defined functionally,
encompassing any “substance that swells and chars upon exposure to
heat or flame.”

(Id. at 3.)

PFG contended that this is the
2

ordinary definition of “intumescent” and that one skilled in the
art would understand the term to have this meaning.

PFG also

pointed to the specifications in the patents themselves, which
state, “Intumescent compounds are compounds that react on contact
to flame by charring and swelling.”

(’162 Patent col. 1, ll. 53–

55; ’639 Patent col. 1, ll. 55–57.)
In contrast with PFG’s functional definition, Tietex argued
that “intumescent” should be defined in terms of both function and
chemical composition.
a

different

section

Tietex derived its proposed definition from
of

the

patents’

specifications,

which

discloses the components of an “intumescent system” and explains
how those components interact to form a thermal barrier:
The thermal barrier of the fabric is provided by an
intumescent finish that chars and swells upon contact to
flame.
There are four basic components to any intumescent
system: a phosphorous-releasing catalyst, a source of
carbon (i.e., a carbonific), a resinous material, and a
blowing agent that is a source of nonflammable gas. On
exposure to flame, these components interact to form the
thermal barrier. . . .
Table 3 lists several of the intumescent products
that may be used in the invention.
Other available
products may also be used.
Although all of these
products are proprietary compounds, they all use the
intumescent mechanism described above.
(’162 Patent col. 7, ll. 25–47; ’639 Patent col. 7, ll. 25–47.)
Tietex therefore argued that the term “intumescent” should be
construed

to

encompass

only

substances

composed

of

the

four

categories mentioned above, namely, (1) a phosphorous-releasing

3

catalyst, (2) a carbonific, (3) a resinous material, and (4) a
blowing agent.

(Doc. 57 at 12 n.4.)

On January 15, 2015, the court issued its claim construction
order.

(Doc.

57.)

The

court

found

that

PFG’s

functional

definition of “intumescent” is consistent with those provided by
many ordinary and technical dictionaries, including dictionaries
cited by Tietex, as well the testimony of expert witnesses.
at 14–18.)

(Id.

The court concluded that PFG did not alter the

functional definition of the term “intumescent” by including a
four-part, composition-based definition for the term “intumescent
system” in the patent specifications.

(Id.)

The court reasoned,

among other things, that, had PFG intended to redefine the term
“intumescent,” it would have provided some clear sign of its intent
to act as its own lexicographer, or at least used the term
“intumescent system” in the patent claims themselves.
14.)

(Id. at

The court therefore concluded that “intumescent” should be

given its ordinary, functional meaning, namely, “a substance that
swells and chars upon exposure to heat or flame.”

(Id. at 20–21.)

On January 23, 2015, the United States Patent and Trademark
Office (“USPTO”) issued a temporary rejection, or Office Action,
to PFG.

(Doc. 94-2.)

The Office Action pertained to Patent

Application 13/690,294 (the ‘294 Application), an invention that
is similar to the ‘162 and ‘639 patents.

(See id.)

The USPTO

based its temporary rejection of the ‘294 Application, in part, on
4

information disclosed in Japanese Patent 08-226057 (“JP ‘057”),
explaining,

“JP

‘057

teaches

that

stichbonded

fabrics

which

comprise cellulosic or synthetic fibers can be used as a substrate
which can be coated with an intumescent material, (vermiculite),
and used to form flame proof fabrics.”

(Id. at 6.)

The USPTO

therefore concluded that PFG’s ‘294 Application was “obvious” in
light

of

JP

‘057’s

disclosure

of

lightweight, stichbonded fabrics.

the

use

of

vermiculite

on

(Id.)

On July 20, 2015, PFG submitted a written response to the
USPTO’s Office Action.

(Doc. 94-3.)

PFG argued:

Contrary to the [USPTO’s] position, JP ‘057 does not
teach or suggest an intumescent coating as defined by
the present claims. Namely, JP ‘057 does not provide an
intumescent finish comprising ore [sic] or more flame
retardant compounds comprising nitrogen, phosphorous, or
a combination thereof. JP ‘057 merely discloses the use
of vermiculite particles.
Vermiculite is not an
intumescent.
As recited in the specification at
paragraph [0050], an intumescent system has four basic
components.
1.
2.
3.
4.

A
A
A
A

phosphorous-releasing catalyst
carbonific
resinous material
blowing agent

Vermiculite has none of these. Although vermiculite is
sometimes used as an additive or enhancement to
intumescent systems because it expands on heating one
skilled in the art would understand that it is not an
intumescent.
(Id. at 10–11 (emphasis in original).)

5

II.

ANALYSIS
Claim construction orders are interlocutory rulings.

Akeva,

L.L.C. v. Adidas Am., Inc., 385 F. Supp. 2d 559, 565 (M.D.N.C.
2005).

As a result, district courts have discretion to reconsider

claim construction orders until a final judgment is entered.

Id.;

see also Am. Canoe Ass’n, Inc. v. Murphy Farms, Inc., 326 F.3d
505, 514–15 (4th Cir. 2003) (“[A] district court retains the power
to reconsider and modify its interlocutory judgments . . . at any
time prior to final judgment when such is warranted.”).

“Most

courts have adhered to a fairly narrow set of grounds on which to
reconsider their interlocutory orders and opinions.”
F. Supp. 2d at 565.

Akeva, 385

Generally, courts will only reconsider

interlocutory rulings in the following situations: (1) there has
been an intervening change in controlling law, (2) new evidence
becomes available, or (3) the earlier decision was based on a clear
error of law or would result in a manifest injustice.

Id. at 566.

Here, Tietex primarily argues that PFG’s response to the
Office

Action

provides

new

evidence

of

the

meaning

of

“intumescent,” as that term is used in the ‘162 and ‘639 Patents. 2

2

Tietex does not cite any intervening change of law. Similarly, although
Tietex vigorously opposed the construction of “intumescent” ultimately
adopted by this court, Tietex does not contend that the court’s original
construction order suffered from a clear error of law. In its reply
brief, however, Tietex does state in passing that PFG’s “definitional
manipulation gives rise to the very manifest injustice that
reconsideration is designed to prevent.” (Doc. 99 at 8.) Apart from
its complaints about PFG’s conduct, Tietex has offered no explanation
of how the court’s claim construction order might result in manifest

6

PFG denied that vermiculite is an intumescent in the Office Action
response, but it did not justify this assertion by reference to
the functional definition of “intumescent.” 3

Instead, immediately

after declaring that “[v]ermiculite is not an intumescent,” PFG
recited the four chemical components of an “intumescent system”
and stated that “[v]ermiculite has none of these.”
10–11 (emphasis in original).)

(Doc. 94-3 at

Tietex interprets PFG’s response

to the Office Action as an assertion that vermiculite is not an
intumescent because it does not contain any of the components of
an intumescent system.

According to Tietex, PFG seeks to “have it

both ways” by adopting “a four-component construction of the term
‘intumescent’

[with

regard

to

the

‘294

Application]

that

is

directly in line with the position that Tietex presented to the
Court at the claim construction stage [with regard to the ‘162 and
‘639 Patents].”

(Doc. 94 at 2.)

PFG, by contrast, argues that its response to the Office
Action

does

not

state

or

imply

that

vermiculite

is

not

an

intumescent because it lacks the components of an intumescent
system.

(Doc. 98 at 4.)

Instead, PFG interprets the language

injustice.
To the extent that Tietex simply means to invoke the
doctrines of prosecution history disclaimer and judicial estoppel, the
court will consider those arguments below.
Otherwise, the court
considers Tietex’s argument regarding manifest injustice to be
comparable to its arguments regarding new evidence.
3

In fact, PFG admitted that vermiculate “expands on heating.” (Doc.
94-3 at 11.) PFG did not address whether vermiculite chars upon exposure
to flame. (See id. at 10–11.)

7

cited

by

Tietex

as

asserting

“that

vermiculite

is

not

an

intumescent and also does not include any of the elements of an
intumescent
former.”
The

system—the

latter

point

simply

reinforcing

the

(Id. (emphasis in original).)
language

of

PFG’s

response

to

the

susceptible to conflicting interpretations.

Office

Action

is

On the one hand,

Tietex’s proposed interpretation is plausible, particularly in
light of the apparent purpose of the quoted passage; if PFG’s
primary goal was to rebut the USPTO’s assertion that vermiculite
is an “intumescent,” it is curious that PFG would provide a
detailed definition for the term “intumescent system” but no
explicit definition for the term “intumescent.” On the other hand,
nothing

in

the

interpretation.

quoted
To

passage

the

explicitly

contrary,

PFG’s

contradicts

response

PFG’s

appears

to

implicitly recognize a distinction between the terms “intumescent”
and

“intumescent

system.”

(See

Doc.

94-3

at

11

(“Although

vermiculite is sometimes used as an additive to intumescent systems
. . . it is not an intumescent.”).)
In light of this ambiguity, PFG’s response to the Office
Action does not outweigh the dictionaries, expert testimony, and
other evidence discussed in the court’s claim construction order.
In fact, although Tietex frames PFG’s response to the Office Action
as

new

evidence,

the

court

considered

substantially

evidence and arguments in the claim construction order.
8

similar
PFG’s

response to the Office Action echoes passages in the specifications
for

the

’162

and

’639

Patents,

which

also

discuss

the

characteristics of an “intumescent finish” and an “intumescent
system” in consecutive paragraphs.

(See ’162 Patent col. 7, ll.

25–47; ’639 Patent col. 7, ll. 25–47.)

Along the same lines, the

court considered and rejected similar arguments regarding the
prosecution history of the ‘162 and ‘639 Patents.

(See Doc. 57 at

17 n.7 (“Tietex cites to extrinsic evidence (e.g., invention
disclosures and original patent applications) that merely repeats
the ‘four basic components’ definition of intumescent ‘systems.’
But because each repetition is still limited to systems and is no
more probative than the specifications themselves, the court is
not

persuaded

beyond

Tietex’s

similar

arguments

about

the

specifications.”) (emphasis in original) (citing Doc. 41 at 15–
18).) 4
In sum, the court concludes that PFG’s response to the Office

4

In addition to arguing that PFG’s response to the Office Action
constitutes newly discovered evidence, Tietex also briefly invokes the
doctrines of prosecution history disclaimer and judicial estoppel. (See
Doc. 94 at 11–12; Doc. 99 at 7 n.2.)
Although prosecution history
disclaimer is conceptually distinct from the lexicography doctrine, it
also applies only “when the patentee unequivocally and unambiguously
disavows a certain meaning to obtain a patent.” See Biogen Idec, Inc.
v. GlaxoSmithKline LLC, 713 F.3d 1090, 1095 (Fed. Cir. 2013).
As a
result, Tietex’s disclaimer argument fails for the same reason as its
lexicography argument.
Similarly, judicial estoppel requires a finding
that a party “intentionally misled the court to gain an unfair
advantage.” Lowery v. Stovall, 92 F.3d 219, 224 (4th Cir. 1996). In
the absence of clearly contradictory statements, this court cannot
conclude that PFG intentionally misled the PTO or the court.

9

Action does not warrant modification of the claim construction
order in this case.

PFG’s response to the Office Action is not

explicitly inconsistent with the evidence considered and discussed
in the claim construction order.

Like the specifications in the

‘162 and ‘639 patents, PFG’s response to the Office Action could
certainly have been worded more clearly.

Nevertheless, PFG’s

statements in the Office Action response do not clearly evidence
PFG’s intent to act as its own lexicographer, and thus do not
warrant modification of the court’s claim construction order.
III. CONCLUSION
For the reasons stated,
IT IS ORDERED that Tietex’s motion for reconsideration (Doc.
93) is DENIED.

/s/
Thomas D. Schroeder
United States District Judge
January 14, 2016

10