Remediation Products, Inc. v. Adventus Americas, Inc., et al

Filing 204

ORDER denying in part and deferring ruling on as to RPI's inequitable conduct and fraud claims 133 RPI's Motion for Summary Judgment; granting in part, denying in part, and deferring ruling on as to RPI's inequitable conduct and fraud claims 143 Adventus's Motion for Partial Summary Judgment. Signed by Chief Judge Robert J. Conrad, Jr on 5/13/10. (gpb)

UNITED STATES DISTRICT COURT FOR THE WESTER N DISTRICT OF NORTH CAROLINA CHARLOTTE DIVISION 3:07cv153-RJC-DCK REM EDIATION PRODUCTS, INC., Plaintiff, v. ADVENTUS AMERICAS, INC., a Delaware Corporation, and ENVIROM ETAL TECHNOLOGIES, INC., a Canadian Corporation, De fe ndants . ) ) ) ) ) ) ) ) ) ) ) ) )

OR D ER

THIS MATTER is before the Court on cross motions for summary judgment regarding the `213 patent and the related briefs (Doc. Nos. 133, 134, 143, 161, 166, 175, 180, & 200). The matter is ripe for determination. For the reasons set forth below, the Court will DENY IN PART the Plaintiff's motion, and GRANT IN PART and DENY IN PART the Defendant's motion. I. BACKGROUND The events leading to this case occurred in early 2005. Defendants Adventus Americas, Inc. and Envirometal Technologies, Inc. ("ETI") (collectively "Adventus"), contacted Plaintiff

Remediation Products, Inc. ("RPI"), in regards to licensing under U.S. Patent No. 5,266,213 ("the `213 patent"), entitled "Cleaning Halogenated Contaminants from Groundwater," and U.S. Patent No. 5,534,154 ("the `154 patent"), entitled "System for Cleaning Contaminated Soil." Adventus indicated it intended to enforce its rights under these two patents but was amenable to reviewing any information indicating that Plaintiff's technology was unrelated to these patents. In July of 2005, representatives of Adventus and RPI met to discuss the matter, but they failed to reach an agreement.

In short, Adventus insisted on licensing and payment of royalties by RPI, whereas RPI insisted that its BOS 100® product does not infringe the `213 and `154 patents. Although the parties thereafter continued to correspond in an effort to reach an agreement, they were unable to resolve their differences. This lawsuit ensued. RPI filed this action on April 6, 2007, and sought a declaratory judgment that the `213 and `154 patents are not infringed and are invalid. Adventus counterclaimed for infringement of the

`213 and `154 patents and also asserted infringement of four additional patents: U.S. Patents Nos. 6,083,394; 5,480,579; 5,411,664; and 5,618,427 (collectively, the "Grace Patents"). RPI filed its reply asserting counterclaims of noninfringement and invalidity of the Grace patents. On August 12, 2009, the Court granted RPI's Motion to Amend its Complaint to include a claim that the `213 patent is unenforceable because of inequitable conduct. (Doc. No. 92). RPI filed this action in the United States District Court for the Western District of North Carolina because Adventus asserted the `213 and `154 patents against RPI and an RPI customer located in Charlotte, North Carolina. The Court denied Adventus's motion to dismiss portions of RPI's first amended complaint on March 18, 2010. Both RPI and Adventus have now moved for summary judgment as to the `213 patent and the `154 patent. RPI has also moved for summary judgment as to the Grace Patents. The Court addresses only the parties' motions as to the `213 patent in this Order. A. RPI's allegedly infringing product and method RPI produces and sells a product under the brand name BOS 100® that is used in cleaning groundwater contaminated with halogenated hydrocarbons. BOS 100® is comprised of 90 to 95% carbon and 5 to 10% elemental iron. It is made by treating granular, activated carbon with an iron

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s a lt to impregnate the activated carbon with the iron salt. The material is then subjected to reducing conditions and heating to a very high temperature to convert the iron salt into elemental iron embedded within the activated carbon structure. The recommended method of using BOS 100® requires mixing the product with water in an open tank to form a slurry. The open tank allows air and atmospheric oxygen into the tank. A por t ion of this atmospheric oxygen is dissolved into the slurry, and the activated carbon in turn adsorbs some portion of this dissolved oxygen. During this process, no attempts are made to prevent oxygen from entering the slurry or the groundwater below. When the slurry is ready for use, holes roughly an inch in diameter are driven into the ground to a depth sufficient to reach the bottom of the contaminated plume of groundwater. The slurry is injected into the hole at specific depth intervals from the lowest level of contamination to the highest le ve l. During each injection, the slurry radiates outwardly and horizontally from the injection point t o form an irregular layer of BOS 100® based on the density and pathways of the aquifer. RPI contends each layer is vertically spaced roughly two feet from the vertically adjacent layers. Adventus contends such regular spacing does not occur. This process is then repeated at other injection points until the slurry has been injected in a grid pattern over the area of contamination to form what RPI contends is hundreds of individual, horizontal layers of BOS 100®. Adventus

contends these layers overlap and come together to collectively make up a continuous wall of the product. Once the slurry is in place, the granular activated carbon adsorbs the chlorinated

hydrocarbons out of the groundwater, and the impregnated elemental iron converts the chlorinated hydrocarbons into harmless compounds.

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B. The `213 patent The `213 patent names Dr. Robert W. Gillham as the inventor. The patent "relates to a procedure for cleaning groundwater . . . permeating through an aquifer, that has been contaminated with chlorinated or halogenated organic compounds such as solvents, or pesticides." (Col. 1, ln. 5). Claims 1, 3, and 6 of the `213 patent are at issue in the current motions. Claim 1 states: 1. Procedure for cleaning an halogenated organic contaminant from groundwater in an aquifer, comprising the steps, in combination, of providing a body of metal; of covering the body of metal in such a manner as to prevent substantially all traces of oxygen from reaching an anaerobic portion of the body of metal; of providing the metal in the form of a body of particulates, cutting, or fibres, of such insistency that the body is permeable to the flow of the groundwater through the body; of conducting the said contaminated groundwater from its native aquifer into and through the body of metal; of so conducting the groundwater from the native aquifer into the body of metal that the groundwater substantially does not come into contact with atmospheric oxygen prior to entering the anaerobic portion of the body of metal; of causing the groundwater to percolate through the said anaerobic portion, and to remain in contact with the metal therein, for a substantial period of time. (6:52- 7:6). Claims 3 and 6 are dependent claims ­ they recite the "[p]rocedure of claim 1 . . . " and then include additional limitations. Consequently, they include all of the steps and limitations set forth in Claim 1 in addition to the limitations set forth in Claims 3 and 6. Claim 3 sets forth: 3. Procedure of claim 1, further comprising the steps: of excavating a trench in the material of the aquifer, in the path of the contaminated groundwater; of placing the said body of metal in the trench; wherein the dimensions of, and disposition of, the trench and of the said anaerobic portion are such that the contaminated groundwater passes 4

through the said anaerobic portion. (7:11- 19). Figure 1 of the patent illustrates the trench embodiment of Claim 3:

Claim 6 states: 6. Procedure of claim 1, further comprising the steps: of providing a series of boreholes in the material of the aquifer, in the path of the contaminated groundwater; of injecting metal into the boreholes; wherein the spacing of the boreholes, and the quantity of metal injected, in relation to the material of the aquifer, are such that the injected metal penetrates into the material to a sufficient extent as to form the said body of metal, and the said anaerobic portion thereof. (8:13- 23). The patent does not provide an illustration of the boreholes embodiment of Claim 6. The relevant portion of the Background states: The conventional procedures for cleaning groundwater that has been contaminated with such chlorinated solvents have generally not involved the chemical breakdown of the contaminant, but have merely removed the contaminant from the water. For examp le , it is known to pass the water over activated carbon, whereby the contaminants are adsorbed onto the carbon. Whilst this is effective to clean the water , the contaminants remain on the carbon: this creates in turn another disposal problem. (Doc. No. 1-1 at 5).

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C. The prior art The `213 patent cites three main sources of prior art that are relevant to this motion. It does not, however, disclose other related sources of prior art. The application leading to the issuance of the `213 patent claims priority from a foreign application that was filed on November 28, 1989. As a result, the critical date for determining prior art under § 102(b) is November 28, 1988. See 35 U.S.C. § 102(b) (providing that a patent or other publication is prior art if it was publicly available more than one year before the filing date of the patent application). 1. Sweeny The `213 patent cites, and the Examiner considered, U.S. Patent No. 4,382,865 to Sweeny. As stated in the `213 patent, Sweeny described: "[A] system for treating the effluent created during the manufacture of halogenated pesticides. Here, the effluent water stream, containing the waste material from the pesticide manufactory is passed over a combination of metals, and it is the fact of the combination which is instrumental in causing the breakdown of the halogenated contaminant." `213 patent, col. 1, lns. 50- 5 7 . Sweeny discloses pumping the effluent water stream through a

reductant metal bed made of "at least one metal such as zinc, aluminum, iron, magnesium, [or] cadmium." Sweeny, col. 6, lns. 15-16. According to Sweeny, a "faster . . . , more complete reaction[,] and a decomposition product in which the proportion of relatively innocuous products is increased[,] is provided by addition of from .1 to 10 meq/g of catalytic metals such as copper, silver, cobalt, nickel and the like." Id. col. 6, lns. 16-21. The `213 patent distinguishes its own claims from the `865 patent because Sweeny taught using a combination of metals and that "it is the fact of the combination [of metals] which is instrument a l in causing the breakdown of the halogenated hydrocarbons." (1:55-57). Further, the `213 patent distinguishes Sweeny in that Sweeny focused on above- gr ound factory effluents, while 6

the `213 patent focuses on remediating groundwater in its native aquifer, which "unlike factory effluent . . . is oxygen-free." `213 patent, col. 1, lns. 58-66. 2. Cohen The `213 patent cites, and the Examiner considered, U.S. Patent No. 5,057,227 to Cohen.1 Cohen describes: a method for in-situ removal of hydrocarbon contaminants from groundwater, where the contaminants are in aqueous solution with the groundwater. The method of this invention comprises contacting in-situ groundwater containing hydrocarbon contaminants in aqueous solution therewith such as gasoline and its components with a permeable barrier comprising a peat material. Cohen, col. 3, lns. 52-59. Peat is an absorbent material, and Cohen discloses it as useful for the "removal of hydrocarbon contaminants such as gasoline and its components (e.g. benzene, toluene, and xylene) in solution from groundwater." Id. col. 2, lns. 39-42. In Cohen, "the permeable barrier is positioned substantially perpendicular to the groundwater stream incident thereto by means of a trench which is dug in such manner as to contact the contaminated groundwater stream in a substantially perpendicular fashion." Id., col. 13, lns. 58-63. Cohen thus teaches the use of trenches in remediating groundwater. 3. Fenton The `213 patent cites, and the Examiner considered, U.S. Patent No. 4,664,809 to Fenton. Fenton describes: the abatement of pollution in groundwaters, by drilling a series of wells in the path o f an advancing front of contaminants in an aquifer, and using the wells to introduce

W h ile Cohen may not be "prior" art, it is clear from the face of the `213 patent that the Examiner c o n s id e re d Cohen in determining that the patent s h o u ld is s u e .

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int o the aquifer an adsorbent for the particular contaminants present. This adsorbent can act as an in situ filtration bed, removing contaminants as water passes through. Fenton, col. 1, lns. 48-54. 4. Senzaki I n 1988, a Japanese journal published an article authored by Tetuo Senzaki and Yasuo Kumagai ("Senzaki"). Senzaki & Kumagai, Removal of Organochloro Compounds in Waste water by Reductive Treatment ­ Treatment of 1,1,2,2 Tetrachloroethane with Iron Powder, Kogyo Yosui (357), 2-7 (Japan 1988). The article was printed in Japanese, with no English translation when it was published. The introduction begins: Recently, pollution of underground water and tap-water with organochloro [chlorinated hydrocarbon] compounds have become a social problem. The major sources of the pollution are cleaning business and industries concerning technology, especially industries producing semiconductors and machines in which industries organo- chloro compounds, e.g. trichloroethylene are used although these compounds are harmful to human body. (Doc. No. 37-1 at 2). Senzaki discloses that iron powder degrades organochloro compounds in water where there is an absence of oxygen. Senzaki states the "[p]resence of metal (iron) is indispensable for the reaction." (Id. at 8). Senzaki also counsels that "The reaction [between organochloro compounds and metallic iron] can be accelerated by addition of electrolytes such as sodium sulfate which increase electric conductivity when the solution containing small quantities of electrolytes, e.g. ionexchanged water, shows low electric conductivity. (Id.). In a post-script, Senzaki notes that the "treatment method of organochloro compounds with metal still has unsolvable problems." (Id. at 9). The source also notes that the problem of contamination exists in both waste water and groundwater.

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5. McMurtry David McMurtry and Richard Elton wrote an article ("McMurtry") in 1985 dealing with me t ho d s for the in situ treatment of contaminated groundwater. McMurtry & Elton, New Approach to In-Situ Treatment of Contaminated Groundwaters, Environmental Progress, Vol. 4, No. 3, at 168 (August 1985). The article briefly outlined three methods of remediation for various scenarios. McMurtry's first method involves an in situ treatment system for cleaning groundwater of organic compounds, such as benzene. The system consists "of a low permeability slurry wall perforated with beds of granular activated carbon . . . ." Id. at 169. McMurtry refers to this wall as a "trench." Id. at 170. McMurtry's second method discloses treating acid waste that was spilled onto a hillside. McMurtry suggests excavating a trench at the bottom of the down slope in the path of the plume of contamination and placing limestone into the trench to neutralize the acid waste and precipitate out the heavy metals. Id. It then suggests flushing water down the hill so that the

remaining contaminants will flow down through the treatment media, and then removing the treatment media from the site. Id. McMurtry's third method involves the in situ treatment of

leachate from a landfill. Here, McMurtry discloses "a slurry wall to control the plume and treatment zones composed of coarse gravel on top of a diffused air injection manifold to provide for both air stripping of the problem organics as well as possible biological removal." Id. McMurtry does not specifically disclose placing metal or a "body of metal" in a trench to treat groundwater contaminated with halogenated hydrocarbons. McMurtry does suggest using any "approp riate treatment media" that is capable of treating contaminated water. As the source states, "[s]uch treatment media could include activated carbon for sorption of organics, ion exchange resins to capture inorganic species, substances for pH control of solubility, media for fixed-film biological reactions enhanced by nutrients and/or oxygen supplies, or combinations of these and many other 9

treatment techniques." Id. at 168. In briefly citing the chemical characteristics of the subsurface environment , McMurtry states, "[m]ost groundwater treatment cases will be in isothermal, anaerobic, reducing environments." Id. 6. Thomson Bruce Thomson and Stephen Shelton wrote a paper ("Thomson") concerning the treatment o f contaminated groundwater by using permeable barriers. Bruce M. Thomson & Stephen P.

Shelton, Permeable Barriers: A New Alternative for Treatment of Contaminate Ground Waters, (Nat'l Water Well Assoc. Pub. 1988). The Thomson reference discloses providing a trench or boreholes filled with treatment material in the path of a contaminated plume of groundwater to form a permeable barrier for treating contaminated water. Figure 1 of Thomson shows a trench filled with material above the groundwater level. The treatment material is permeable so that the groundwater flows slowly through it. Figure 2 from Thomson shows that a well-based permeable barrier

requiring the injection of metal may be used instead of a trench-based barrier for treating deep levels of contaminated groundwater. II. LEGAL STANDARD Summary judgment shall be granted "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter o f law." Fed. R. Civ. P. 56(c). The movant has the "initial responsibility of informing the district court of the basis for its motion, and identifying those portions of `the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any,' which it believe s demonstrate the absence of a genuine issue of material fact." Celotex Corp. v. Catrett, 477 10

U.S. 317, 323 (1986) (quoting Fed. R. Civ. P. 56(c)). Once this initial burden is met, the burden shifts to the nonmoving party. The nonmoving party "must set forth specific facts showing that there is a genuine issue for trial." Id. at 322 n.3. The nonmoving party may not rely upon mere allegations or denials of allegations in his pleadings to defeat a motion for summary judgment. Id. at 324. The nonmoving party must present sufficient evidence from which "a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986); accord Sylvia Dev. Corp. v. Calvert County, Md., 48 F.3d 810, 818 (4th Cir. 1995). When ruling on a summary judgment motion, a court must view the evidence and any inferences from the evidence in the light most favorable to the nonmoving party. Anderson, 477 U.S. at 255. "`Where the Record taken as a whole could not lead a rational trier of fact to find for the nonmoving party, there is no genuine issue for trial.'" Ricci v. DeStefano, 129 S. Ct. 2658, 2677, 557 U.S. ___ (2009) (quoting Matsushita v. Zenith Radio Corp., 475 U.S. 574, 587 (1986)). III. DISCUSSION As Mr. Justice Frankfurter once recognized, the judiciary is ill-fitted "to discharge the duties cast upon them by patent legislation." Marconi Wireless Telegraph Co. v. United States, 320 U.S. 1, 60-61 (1943) (Frankfurter, J., dissenting). Nonetheless, he suggested that "judges must overcome t heir scientific incompetence as best they can." Id. Ill-fitted though it is, the Court will attempt to resolve the issues presented. At the outset, the Court notes the Federal Circuit has recently called into question the legal standard governing inequitable conduct claims. See Therasense, Inc. v. Becton, Dickinson and Co., 2010 WL 1655391 (Fed. Cir. Apr. 26, 2010) (per curiam) (granting rehearing en banc regarding the

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current framework for determining materiality and intent). The Court thus defers ruling on the parties' motions regarding both RPI's inequitable conduct and fraud claims until the Federal Circuit resolves this legal uncertainty. A. Infringement Adjudication of patent infringement requires a two-step process: (1) the court must construe t he disputed claim terms to determine the scope and meaning of the claims alleged to be infringed; and (2) the court must apply the construed claims to the accused product and process. Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc). The court has already construed and clarified the disputed claim terms and phrases in its orders dated October 10, 2008 (Doc. No. 107); January 7, 2009 (Doc. No. 121); and August 7, 2009 (Doc. No. 187). The Court no w attends to the second endeavor of determining whether the claims, as construed by the Court, embody the accused product and process. 1. Standard for patent infringement In order to prove patent infringement, the patentee must "prove that the accused device emb o d ie s every limitation in the claim, either literally, or by a substantial equivalent." Zelinski v. Brunswic k Corp., 185 F.3d 1311, 1316 (Fed. Cir. 1999). Literal infringement occurs when every limita t io n recited in the claim is found in the accused device so that the claims read on the device exactly. Amhil Enterprises Ltd. v. Wawa, Inc., 81 F.3d 1554, 1562 (Fed. Cir. 1996). Even where an accused product or process does not literally infringe, however, a patentee may still prove infringement under the doctrine of equivalents. Under the doctrine of equivalents, a product or process that does not literally infringe each element of a patent claim may still infringe if each and every limitation of the claim is literally or equivalently present in the accused product or process. Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 40 (1997). The 12

doctrine of equivalents is applied to individual claim limitations, rather than to an invention as a whole. K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1367 (Fed. Cir. 1999). Consequently, "the doctrine of equivalents cannot be used to vitiate an element from the claim in its entirety." Id. Depending on the facts of a case, courts apply one of two tests to determine equivalence. Warner- Jenkinson, 520 U.S. at 39-40 (noting regardless of the test applied, the central inquiry is whe t he r "the accused product or process contain[s] elements identical or equivalent to each claimed element of the patented invention"). First, under the insubstantial differences test, "[a]n element in the accused device is equivalent to a claim limitation if the only differences between the two are insubstantial." Voda v. Cordis Corp., 536 F.3d 1311, 1326 (Fed. Cir. 2008) (quoting Honeywell Int'l Inc. v. Hamilton Sundstrand Corp., 370 F.3d 1131, 1139 (Fed. Cir. 2004)). Alternatively, the function- way- result test defines equivalence as where "an element in the accused device . . . `performs substantially the same function in substantially the same way to obtain substantially the same result'" as the claim limitation. Id. (quoting Schoell v. Regal Marine Industries, Inc., 247 F.3d 1202, 1209-10 (Fed. Cir. 2001)). "Summary judgment on the issue of infringement is proper when no reasonable jury could find that every limitation recited in a properly construed claim either is or is not found in the accused device either literally or under the doctrine of equivalents." SmartDisk Corp., 406 F.3d 1359, 1364 (Fed. Cir. 2005). 2. Claim 1 a. providing a "body of metal" The Court has construed and twice clarified for the parties the term "body of metal." Under the Court's final construction of the term, a "body of metal" is "a collection of particles of metal into an amount," which includes only metal particles. (Doc. Nos. 121 at 6; 187 at 2). 13 PC Connector Solutions LLC v.

i. literal infringement The Court finds that BOS 100® does not literally infringe; it is simply not a body of metal under the Court's construction of that term. There is no dispute regarding the basic composition of BOS 100®. It is a combination of granular activated carbon and elemental iron. Adventus seeks that the Court further clarify its construction of the term "body of metal," suggesting the Court, in stating that a body of metal includes only metal particles, was simply pointing out the tautology that "Metal is Metal," and when underground the metal may be accompanied by or in the presence of other material. The question as to literal infringement, however, is not what material may

accompany the body of metal when it is placed underground, but what material comprises the actual body of metal as that term is construed. The Court declines to revisit the matter for what would be the third time, as its construction of the term is sufficiently clear. BOS 100®, being composed of both carbon and metal, does not literally infringe the "body of metal" limitation of Claim 1. ii. doctrine of equivalents Yet while BOS 100® does not literally infringe the "body of metal" limitation, it may serve as the limitation's equivalent. Adventus argues this point, inter alia, by way of the function-wayresult test. It contends BOS 100® is the equivalent of the `213 patent's "body of metal" because BOS 100® "does substantially the same thing (provides a treatment filter, barrier or wall) in substantially the same way (in situ, away from atmospheric oxygen) to achieve substantially the same result (reactive contact of iron with the contaminant of contaminated groundwater)." (Doc. N o . 200 at 38). RPI's arguments that BOS 100® is not equivalent to a "body of metal" center around the carbonic nature of BOS 100®, which it alleges creates a substantial difference. RPI

insists the Background section of the `213 patent specifically disclaims any use of carbon, and thus that any equivalent to a "body of metal" cannot contain carbon. RPI further argues that because 14

BOS 100® is made up of 90-95% carbon and only 5-10% iron, it has a substantially different character than a "body of metal." In addition, RPI contends that BOS 100® works in a very different way than the `213 patent's "body of metal": the carbon of BOS 100® absorbs contaminants from water before the iron reacts with those contaminants, while the `213 patent's "body of metal" reacts with contaminants when contaminated groundwater simply passes through the treatment filter. RPI contends the Background section of the `213 patent specifically disclaims any use of carbon. It argues that as a result, any equivalent to a "body of metal" cannot contain carbon. If Ad ve ntus has disclaimed all uses of carbon, then RPI may have a good argument. Cf. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 741 (2002) (holding under prosecution history estoppel that narrowing amendments in patent's prosecution history may have surrendered particular equivalents at issue). The relevant portion of the Background states: The conventional procedures for cleaning groundwater that has been contaminated with such chlorinated solvents have generally not involved the chemical breakdown of the contaminant, but have merely removed the contaminant from the water. For example, it is known to pass the water over activated carbon, whereby the conta minants are adsorbed onto the carbon. Whilst this is effective to clean the water , the contaminants remain on the carbon: this creates in turn another disposal problem. (Doc. No. 1-1 at 5). This language does not disclaim the use of carbon altogether. Rather, it uses the term "merely" in describing the limitations of using carbon alone. The Court reads this

statement as saying carbon alone "merely" removes contaminants from water without breaking them down, which "creates . . . [a] disposal problem." It does not disclaim the use of carbon in Such a reading would

c o mbination with metals that would negate the noted disposal problem.

render the paragraph meaningless. The Background does not disclaim all uses of carbon, and "body of metal" equivalents are thus not limited to products without carbon.

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RPI argues that BOS 100® has a substantially different character than a "body of metal." BOS 100® is 90-95% carbon and 5-10% iron. Further, through a heating process, the iron becomes e mb e dded into the pores of the carbon. RPI maintains that the small amount of iron along with the way it is embedded into the pores of the carbon represent a highly substantial difference from a "body of metal." The Court does not agree. The active ingredient in BOS 100® is iron, rather than carbon. Iron is the same reactive element as the `213 patent's "body of metal." Simply by

embedding what may be a lesser amount of iron into a much larger amount of absorbent material does not change that reactive element's character. The difference in character between BOS 100® and a "body of metal" is insubstantial. RPI further maintains that BOS 100® operates in a discrete manner from that of the `213 patent's "body of metal." It points out that BOS 100®'s carbon absorbs contaminants from water before its iron reacts with those contaminants, while the `213 patent's "body of metal" reacts with contaminants when contaminated groundwater simply passes through the treatment filter. The Court fails to see a substantial difference here. The composition of BOS 100® certainly changes the

manner in which contaminants are presented to the iron. But it does not change the key reaction: the use of iron to break down contaminants. Whether BOS 100® is more efficient than the `213 patent's "body of metal" is tangential to the inquiry. Without iron, BOS 100® would be nothing more than granular activated carbon alone, which would not break down the contaminants. The Court thus finds that, while BOS 100® is not a literal "body of metal," no reasonable jury could find that the difference is anything but insubstantial. See Voda, 536 F.3d at 1311.

Simply adding carbon to the equation does not change the reality that RPI uses iron as its active ingredient , and that the iron is what breaks down the contaminants. Likewise, no reasonable jury could find that BOS 100® is not equivalent to a "body of metal" under the function-way-result test. 16

See id. BOS 100® performs substantially the same function as the `213 patent's "body of metal" ­ using iron to break down contaminants in groundwater. It performs that function in substantially the same way ­ by chemical reaction between the iron and the contaminants. And it obtains substantially the same result ­ the breakdown of harmful compounds, leaving largely unc ontaminated water. That the contaminants may be absorbed from the water into the carbon befo r e being broken down by the iron does not avoid the "body of metal" limitation. As a result, the Court determines that no reasonable jury could find BOS 100® is not equivalent to a "body of metal." b. covering the body of metal in such a manner . . . Claim 1's next limitation describes "covering the body of metal in such a manner as to prevent substantially all traces of oxygen from reaching an anaerobic portion of the body of metal." (Doc. No. 1-1 at 7). The Court has construed the phrase "anaerobic portion of the body of metal" as meaning the "portion that will not rust." (Doc. No 107 at 3). The Court noted in a Markman ruling that the "covering" of the body of metal acts as a sealing function. It further recognized: The covering of the body of metal can occur in different ways depending on the e mb o d ime nt used. The body of metal can be covered by soil in the trench embodiment or by a roof in the pond embodiment, or by allowing the top of the body of metal to rust which acts as a seal. (Id.). RPI argues on two fronts regarding this limitation. It first contends that because BOS 100® is injected into the ground, there is no act of covering it. Second, RPI maintains that the method of using BOS 100® results in adding oxygen so that there is not an anaerobic portion of the BOS 100®. Adventus argues that merely by injecting BOS 100® into the ground, RPI does not avoid "covering" the BOS 100® with soil. In addition, Adventus refutes RPI's oxygen argument by 17

explaining that BOS 100® would not work if there were no anaerobic portion of it. W he n the Court listed the ways in which a body of metal may be "covered" under the Claim 1 of the `213 patent, it did not set out to create an exhaustive list. While soil or other material is not actively poured over BOS 100® during its application, the BOS 100® certainly becomes covered with soil or whatever material comprises the aquifer into which it is injected. Injecting the BOS 100® into the ground leads to its becoming covered with the material of the aquifer. Stated another way, the method of applying BOS 100® covers it with the material of an aquifer by injecting it beneath layers of the aquifer. RPI's argument to the contrary is no more than semantics. The method of applying BOS 100® involves "covering" it.2 The question then becomes whether, in applying BOS 100®, there is an "anaerobic portion" of it. Such a portion would be that which does not rust, as the Court has construed the term. RPI argues that when BOS 100® is mixed with water in an above-ground tank, the process results in dissolving atmospheric oxygen into the mixture. RPI's expert Noland explains that the activated carbon in the BOS 100® adsorbs some of the dissolved oxygen, thus concluding that the conditions under which BOS 100® operates are oxidizing. As he suggests, "there will be oxygen inside the grain of activated carbon in the pore network." (Doc. No. 166-3 at 10). He further states that he is unsure that it matters whether conditions are oxidizing or reducing in order for iron to degrade chlorinated solvents underground. (Doc. No. 166-3 at 8). RPI's independent expert Hilger, however, has observed that "BOS 100® has millions of microsites, so that even if oxygen is present in the bulk liquid, many of the interstices of the

Even if this invers e type of covering method were found not to literally infringe, the Court finds under e it h e r the ins u b s t a n t ia l difference or function-way-res u lt tes t , it is the equivalent of the `213 patent's covering limit a t io n .

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adsorbent will remain anaerobic." (Doc. No. 195-15 at 30). Hilger further admits "[a]lthough some of the BOS 100® iron is rusted, there will be many interstices with iron that is not rusted and not e xposed to oxygen" (Doc. No. 195-15 at 30). This admission comes in addition to RPI's expert Warner, who states that "the soil above the seams of BOS 100® serves to prevent contact with atmospheric oxygen." (Doc. No. 195-16 at 43). From RPI's own independent experts, it is clear tha t while there may be some dissolved oxygen present in a BOS 100® slurry, there is a portion of iron in the mixture that will not rust. This portion is an anaerobic portion of the BOS 100® as the Court has construed the term. The Court thus finds no reasonable jury could conclude that the method of applying BOS 100® does not involve "covering the [BOS 100®] in such a manner as to prevent substantially all traces of oxygen from reaching an anaerobic portion of the [BOS 100®]" either literally or under the doctrine of equivalents. c. providing the metal in the form of a body of particulates . . . The next element states, "providing the metal in the form of a body of particulates, cutting, or fibres . . . ." RPI contends that the metal in the BOS 100® is not "in the form of particulates, c ut t ing, or fibres . . . ." It argues the iron in BOS 100® is "submicroscopic," rather than in p a rticulate, cutting, or fiber form. Adventus maintains that the iron in BOS 100® is in the form of particles and falls within this element of Claim 1. The parties did not disagree about or stipulate to the definitions of "particulates, cutting, or fibres" for Markman purposes. Adventus equates the term "particulates" with the term "particles"

19

in arguing that the elemental iron embedded in BOS 100® is in the form of particles.3 RPI argues that particles are different from particulates, and that regardless, the iron in BOS 100® is in the form of "submicron diameter clusters," "microscopic clusters of iron atoms," "iron molecules," or "microscopic deposits of metallic iron." characterization of the form of iron. RPI points out that Adventus admits in its own press release that the `213 patent "may not apply" to certain "nano-scale iron-based materials . . . ." (Doc. No. 166-16 at 2). However, this same release offers only one example of non-infringing material: "nanometer-sized, often bimetallic particles that continue to move advectively with groundwater after injection . . . ." (Id.). The Adventus points out that RPI is inconsistent with its

elemental iron embedded in BOS 100® does not continue to move with the groundwater; it remains in place within the GAC. Thus the press release does not admit to non-infringement. The term "particulate" is defined differently in various sources. Merriam- W e b s ter defines the noun particulate as "a particulate substance," and the adjective particulate as "of or relating to minute separate particles."4 Combining these definitions would make particulate "a substance of

or relating to minute separate particles." The Oxford English Dictionary defines the noun particulate as "a particulate substance," and the adjective as "1. Existing in the form of minute separate particles; composed of such particles."5 Under either of these definitions, the definition of "particle" becomes key, contrary to RPI's insinuation that it is irrelevant. The Oxford English Dictionary

A d v e n t u s als o offers res u lt s of a tes t purportedly conducted by the North Carolina State's A n a ly t ic a l In s t ru me n t a t io n Facility. However, this document is uns u p p o rt e d by a declaration or affidavit of the pers o n who p e rfo rme d the analys is , and the Court will not cons id e r this evidence. See Ors i v. Kirkwood, 999 F.2d 86, 92 (" It is well es t a b lis h e d that uns wo rn , unauthenticated documents cannot be cons id e re d on a motion for s u mma ry ju d g me n t ." ).
4

3

http://www.merriam-webs t e r.c o m/ d ic t io n a ry / p a rt ic u la t e . http://dictionary.oed.com/cgi/findword?query_type=word&queryword=particulate.

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d e fine s particle as "I. A small quantity of matter. 1. a. A minute fragment or quantity of matter; the smallest perceptible or discernible part of an aggregation or mass; (formerly often) an atom or molecule . . . 3. Physics. Any of numerous constituents of the physical world that are smaller than an atomic nucleus, such as protons, electrons, neutrinos, and quarks."6 I t is clear the definition of "particulate," as informed by the definition of "particle," encompasses the iron in BOS 100® no matter what phrase is used to describe it. Whether tagged as "submicron diameter clusters," "microscopic clusters of iron atoms," or any other small-sounding label, the Court finds no reasonable jury could conclude that the iron in BOS 100® is not "particulate " under this element of Claim 1. Further, because the Court has already concluded BOS 100® is equivalent to a body of metal, this element may be satisfied if BOS 100® as a whole ­ including both the GAC and the iron ­ is a particulate. The Court finds that whether one considers only the iron or the BOS 100® as a whole, there is no genuine issue for trial. The Court will grant Adventus's motion and deny RPI's motion on this element. d. of such consistency that the body is permeable . . . The next limitation describes that the body of metal is "of such consistency that the body is permeable to the flow of the groundwater through the body." The Court has construed this phrase to mean the body of metal is "of such consistency that the groundwater can pass through the metal particles." (Doc. No. 107 at 4). RPI argues that groundwater cannot pass through the iron in BOS 100® because the iron is impregnated into the GAC. RPI also seems to argue that the Court's construction requires water to physically penetrate iron, rather than pass through a collection of metal particles, which make up

6

http://dictionary.oed.com/cgi/findword?query_type=word&queryword=particle.

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a body of metal.

Adventus argues correctly that the Court simply meant the contaminated

groundwater is required to flow through the collection of metal particles, rather than through individual metal particles. The Court having previously found BOS 100® is equivalent to a body of metal, the mere fact that groundwater can pass through a collection of BOS 100® granules is enough to meet this limitation. However, even if the Court isolates the inquiry to the embedded iron alone, the collection of iron particles still allows groundwater to pass through it. Thus both the BOS 100® and its embedded iron are permeable to the flow of groundwater, and no reasonable jury could find differently. Because there is no genuine issue for trial, the Court will grant Adventus's motion and deny RPI's motion as to this limitation. e . conducting the said contaminated groundwater . . . Claim 1's next element states: "conducting the said contaminated groundwater from its native aquifer into and through the body of metal." The Court has construed "conducting" as "passing through" which can be achieved actively or passively. (Doc. No. 107 at 4). Adventus argues "the installations of Plaintiff's treatment material rely on groundwater to bring the contaminant to and through the body of metal, just as contemplated by the `213 patent." (Doc. No. 200 at 44). RPI contends that since BOS 100® is injected into an aquifer containing the contaminated groundwater, the groundwater is not conducted "from its native aquifer into and through the body of metal." The Court fails to see a difference between the BOS 100® method and this limitation of the `213 patent. Whether a body of metal is injected directly into an aquifer (in discrete horizontal layers or otherwise) or placed in a trench or other embodiment adjacent to the aquifer, the groundwater must be conducted from the aquifer and into and through the body of metal. Unless the injected body of metal (or BOS 100® in this case) were to somehow completely amalgamate 22

wit h the material of the native aquifer, the groundwater must leave the aquifer in order to move "into and through the body of metal" (or a portion of the body of metal in the case of a discrete horizontal la ye r ) . It is of no significance that in the BOS 100® application, once the groundwater moves

through the body of metal, it then may enter another portion of the native aquifer. The groundwater has still been conducted "from its native aquifer into and through the body of metal." Because there is no genuine issue of material fact, the Court will grant Adventus's motion and deny RPI's motion as to this claim limitation. f. so conducting the groundwater from its native aquifer . . . Claim 1 contains the further limitation of "so conducting the groundwater from the native aquifer into the body of metal that the groundwater substantially does not come into contact with a t mo s p he r ic oxygen prior to entering the anaerobic portion of the body of metal." The Court has already determined that the "body of metal," "conducting," and "anaerobic portion" limitations are met. Further, the Court has noted that RPI's own expert has acknowledged "the soil above the seams of BOS 100® serves to prevent contact with atmospheric oxygen." (Doc. No. 195-16 at 43). Therefore, there is no genuine issue of material fact as to this claim limitation, and the Court will grant Adventus's motion and deny RPI's motion regarding this issue. g. causing the groundwater to percolate . . . The final element of Claim 1 states: "causing the groundwater to percolate through the said anaerobic portion, and to remain in contact with the metal therein, for a substantial period of time." For Markman purposes, the Court determined "percolate" means "flow" and found that "for a substantial period of time" is not limited to one or two days. The Court further noted that the period of time necessary for the groundwater to remain in contact with the metal depends on the reactiveness of the metal used, and that the "one or two days" mentioned in the specification may 23

be preferred under certain circumstances but does not restrict this limitation to such a time period. (Doc. No. 107 at 4-5). i. literal infringement RPI contends in essence that the groundwater does not percolate, or flow, through the anaerobic portion of BOS 100®. Rather, it maintains through its expert Noland's testimony that the groundwater flows among the granules of BOS 100®, and the GAC absorbs the contaminants out of the water and into the pores of the GAC. From there, RPI argues that the embedded iron breaks d o w n the contaminants that have already been absorbed into the carbon, without the groundwater actually flowing through the anaerobic portion (the unrusted iron). Adventus, however, offers no evidence to refute Noland's assertions and fails to distinguish between (1) groundwater and (2) the contaminants that are allegedly absorbed from the groundwater in the application of BOS 100®. Thus the Court accepts Noland's expert opinion as true in analyzing whether RPI infringes this limitation for summary judgment purposes. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 256- 57 (1986) (holding the nonmoving party must present affirmative evidence in order to defeat a properly supported motion for summary judgment). And so the Court must accept that when BOS 100® is applied, the groundwater itself does not reach the anaerobic portion of the iron, but rather the contaminants in the groundwater are absorbed from out of the water before coming into contact with the anaerobic portion. On these facts, no reasonable jury could find that groundwater literally percolates "through the anaerobic portion," because the groundwater never reaches that portion. ii. doctrine of equivalents Whether RPI infringes this limitation under the doctrine of equivalents is another question. Under the function-way-result test, Noland's description of the process is not the equivalent of this limitation. It employs substantially the same function ­ bringing contaminants from groundwater 24

int o contact with iron. But it does not act in substantially the same way ­ the `213 patent describes the groundwater percolating through the anaerobic portion of a body of metal, while the BOS 100® method, according to Noland, involves carbon absorbing the contaminants from groundwater without the groundwater reaching the anaerobic portion of iron. Ho wever, there may be an insubstantial difference between RPI's method and this limitation. The Court finds from the minimal evidence presented on this point that there is a genuine issue of fact as to this question. See Upjohn Co. v. Mova Pharmaceutical Corp., 225 F.3d 1306, 1309 (Fed. Cir. 2000) ("The determination of equivalency is a question of fact . . . .") (citation omitted). Does the fact, for summary judgment purposes, that contaminants in the BOS 100® application are extracted from the groundwater before reaching the anaerobic portion of metal create a substantial difference from this element of Claim 1? There is a genuine issue of fact as to whether RPI infringes this limitation under the insubstantial difference test. The parties will be able to develop this issue at trial. 3. Claim 3 The parties also contest whether RPI infringes Claim 3 of the `213 patent.7 The Court has construed dependent Claim 3 to add limitations to the steps of Claim 1 from which it depends. Claim 3 states: Procedure of claim 1, further comprising the steps: of excavating a trench in the material of the aquifer, in the path of the contaminated groundwater; of placing the s a id body of metal in the trench; wherein the dimensions of, and disposition of, the

RPI als o s t a t e s in its motion that it s e e ks s u mma ry judgment regarding the is s u e of infringement of Claim 2 of the `213 patent, but it does not argue the matter. A d v e n t u s did not move for s u mma ry judgment as to the a lle g e d infringement of Claim 2. The Court thus does not addres s Claim 2 of the `213 patent.

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trench and of the said anaerobic portion are such that the contaminated groundwater passes through the said anaerobic portion. (Doc. No. 1-1 at 8). The Court has already determined there is no genuine issue of fact regarding the "body of metal" and "anaerobic portion" limitations of Claim 1. However, the Court found genuine issues of material fact exist regarding whether groundwater passes through an anaerobic portio n of the iron in BOS 100® under the "insubstantial difference" test of the doctrine of equivalents. So here, the same jury question remains: whether "the contaminated groundwater

passes through the said anaerobic portion." Further, there may be an issue of fact regarding Claim 3's "trench" limitation. The Court has construed the term "a trench" "to embody `a single trench' that is placed in the path of the plume that is filled with the body of metal which can consist of mixtures of metal and aquifer sand, gravel, and other materials." (Doc. No. 107 at 5). The Court later clarified on a motion to reconsider that "[t]o the extent that the term trench must be reconsidered, the Court construes the term `trench' as a `single trench.'" (Doc. No. 121 at 5). RPI admits that on one project, a small amount of BOS 100® was placed in a trench as required by Claim 3. RPI claims, however, that it did not recommend using the BOS 100® in such a manner. Rather, RPI contends it does not advertise or market the use of BOS 100® in a trench. RPI is not liable for direct infringement of Claim 3 unless it directly performed each step of Claim 3 in this instance, or at least exercised control or direction over the customer in its use of the trench. See Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1329 (Fed. Cir. 2008) ("[M]ere `armslength cooperation' will not give rise to direct infringement by any party."). Adventus points to an email exchange between RPI's principal Noland and the customer who used BOS 100® in a trench. There, Noland set forth multiple options for the product's application, 26

in the end stating: [I]t seems the most cost effective way to perform the installation is to simply mix the product into the native formation. A swath could be cleared (perhaps 6 feet wide and the top 1 to 2 feet of soil and asphalt removed[)]. The BOS 100 could be completely saturated and then poured (wet) into the depression and mixed into the saturated sands/gravels down to bedrock. The overburden would then be replaced, compacted and any asphalt removed could be replaced. (Doc. No. 195-17 at 11). RPI offers testimony from Noland that RPI recommended the customer either inject the BOS 100® directly into the contaminated groundwater or mix it directly into the contaminated soil and contaminated groundwater, but that instead, the customer excavated a trench, mixed the BOS 100® with pea gravel, and placed the mixture into the trench. While Noland's email recommendation may strike the Court as describing a trench, a genuine issue of material fact exists. A reasonable jury could find that the email describes

something other than the trench limitation of Claim 3. Because genuine issues of fact remain whether (1) "the contaminated groundwater passes through the said anaerobic portion" and (2) whether RPI infringed the trench limitation, the Court will deny the parties' motions as to Claim 3. 4. Claim 6 The final contested claim of the `213 patent is Claim 6. Claim 6 describes the boreholes embodiment. Claim 6 states: Procedure of claim 1, further comprising the steps: of providing a series of boreholes in the material of the aquifer, in the path of the contaminated groundwater; of injecting metal into the boreholes; wherein the spacing of the boreholes, and the quantity of metal injected, in relation to the material of the aquifer, are such that the injected metal penetrates into the material to a sufficient extent as to form the said body of metal, and the said anaerobic portion thereof. (Doc. No. 1-1 at 8). The Court construed the disputed terms of Claim 6 as "a collection of metal particles that is injected into the boreholes in such a way that consists of a continuous wall of filings 27

that is not exposed to atmospheric oxygen in a manner that would cause rust." (Doc. No. 107 at 56). RPI provides expert testimony that the "direct push" method of injection differs from the "drill and jet" process described in Claim 6. RPI provides further expert testimony that its method of injecting BOS 100® does not create a "continuous wall," which the Court has construed Claim 6 to describe. Adventus, on the other hand, contends there is little difference between "drill and jet," "direct push," and horizontal "hydraulic fracturing," and that Claim 6 covers each of these methods of injecting metal particles into boreholes. There is a genuine issue of fact regarding whether the method of applying BOS 100® creates a continuous wall. RPI provides expert testimony that, "[g]iven the way the material is installed, it's completely unrealistic to think" a continuous wall is created. (Doc. No. 148-34 at 62).

Adventus points to, among other items, RPI's use of the terms "filter," "barrier," and "wall" to describe the embodiment of its treatment material. Adventus also notes RPI has told customers it provides coverage "throughout the vertical distribution." (Doc. No. 200 at 52). A reasonable jury could find for either party on this issue. Claim 6. B. Validity under 35 U.S.C. § 112 RPI alleges the claims of the `213 patent, if construed broadly enough to cover the use of BOS 100®, are invalid under 35 U.S.C. § 112, ¶ 1. Adventus has moved for summary judgment on this claim. 35 United States Code, Section 112, states in pertinent part: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it 28 The Court will thus deny both parties' motions as to

is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. 35 U.S.C. § 112, ¶ 1 (2006). "Whether a claim satisfies the enablement requirement of 35 U.S.C. § 112 is a question of law, . . . based on underlying facts . . . ." Sitrick v. Dreamworks, LLC, 516 F.3d 993, 999 (Fed. Cir. 2008). First, a patent's specification "must describe the manner and process of making and using the invention so as to enable a person of skill in the art to make and use the full scope of the invention without undue experimentation." LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1344-45 (Fed. Cir. 2005). Second, the specification must "describe the invention

sufficient ly to convey to a person of skill in the art that the patentee had possession of the claimed invention at the time of the application, i.e., that the patentee invented what is claimed." Id.

And while case law requires a two-part inquiry, "[t]hose two requirements usually rise and fall together." Id. at 1345. However, as Federal Circuit case law makes clear, "a patentee need not describe in the specification every conceivable and possible future embodiment of his invention." CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 1997) (internal quotation marks and citation omitted). That is because the patent specification is written for a person of skill in the art, and such a person comes to the patent with the knowledge of what has come before. P la c e d in that context, it is unnecessary to spell out every detail of the invention in the specification; only enough must be included to convince a person of skill in the art that the inventor possessed the invention and to enable such a person to make and use the invention without undue experimentation. Falko- Gunter Falkner v. Inglis, 448 F.3d 1357, 1366 (Fed. Cir. 2006) (citation omitted). Still, "`[t]he scope of the claims must be less than or equal to the scope of enablement' to `ensure[] that the public knowledge is enriched by the patent specification to a degree at least commensurate with the scope of the claims.'" Sitrick, 516 F.3d at 999 (quoting Nat'l Recovery Techs., Inc. v. Magnetic 29

Separation Sys., Inc., 166 F.3d 1190, 1195-96 (Fec. Cir. 1999)). RPI in essence asserts if any of the claims of the `213 patent are construed to cover BOS 1 0 0 ® or its method of use, those claims are invalid because the specification does not enable a person of skill in the art to make BOS 100® and use it as RPI recommends. RPI contends the `213 patent specification does not disclose or suggest using anything other than "bulk filler material" in additio n to iron, and that it does not broadly disclose mixing iron with other materials such as activated carbon. The Court has already found that the `213 patent's Background section does not discla im the use of carbon in tandem with iron, but rather the use of carbon alone. Yet the

specification certainly does not explicitly endorse the use of carbon either. Unlike § 112, however, RPI's assertion focuses on the relationship among a patent's specification, its claims, and the alleged infringing method or device. Section 112, ¶ 1 focuses, at least textually, only on the relationship between a patent's specification and its own claims. RPI points to the LizardTech case in support of its position. 424 F.3d at 1344-46. In LizardTech, the patent's specification described a single specific means of creating a seamless discrete wavelet transform ("DWT") of a digital image. Id. at 1344. One claim of the patent,

however , involved a generic statement including any means of creating seamless DWTs. Id. The c o ur t held that the patentee's description of one particular method did not enable its generic claim to "any and all means for achieving that objective." Id. at 1346. RPI also cites Tronzo v. Biomet, Inc. as supporting its contentions. 156 F.3d 1154 (Fed. Cir. 1998). There, a patent claimed an artificial hip socket with generic-shaped cup implants, while the specification focused only on conical- shaped cup implants. Id. at 1159. The court held the specification failed to enable the full scope of the patent's generic claims. Id. at 1160.

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These cases are not on all fours with the case at hand. Both LizardTech and Tronzo involved specific written descriptions that failed to enable generic claim language. Here, RPI points to no generic claim language of the `213 patent. Instead, RPI rests on a rudimentary notion that if RPI has infringed, then there is no way the specification enables the patent's claims, because the specification does not enable BOS 100® or its method of use. Other cases have considered scenarios where a patent's non-generic claim language goes beyond the scope of the specification. For instance, in Sitrick v. Dreamworks, LLC, a patent specifically claimed a method for integrating a user's audio signal or video image into a pre-existing video game or movie. 516 F.3d at 995. The Federal Circuit held the patent was invalid under § 112 because the specification only enabled the scope of claims to include video games, but not movies. Id. Similarly, in Automotive Technologies International, Inc. v. BMW of North America, Inc., a patent involved crash-sensing devices for triggering the deployment of airbags during side-impact vehicle collisions. 501 F.3d 1274, 1277 (Fed. Cir. 2007). The patentee "vigorously advocated" for and obtained a broad claim construction that included both mechanical and electrical side impact sensors. Id. at 1280. The Federal Circuit held these broadly construed claims invalid under § 112 because the specification only enabled the claim for a mechanical sensor, and not for an electrical one. Id. at 1284. Unlike the Sitrick and BMW cases, however, the specific claims of the `213 patent as constr ued by the Court simply do not go beyond the scope of what the specification enables. RPI fails to point out a specific claim or limitation that lies beyond the scope of the `213 patent's specification. Rather than focusing on the Court's construction of the claims as what the

specification must enable, see BMW, 501 F.3d at 1280, RPI focuses on the end possibility of infringement of the construed claims. However, infringement is a separate question, going a step 31

beyond the § 112 inquiry. See CFMT, Inc. v. YieldUP Int'l Corp., 349 F.3D 1333, 1339 (Fed. Cir. 2003) ([T]his court gauges enablement at the date of the filing, not in light of later developments.") (citation omitted). This difference is especially magnified when considering the application of the doctrine of equivalents to infringement analysis. A discussion, albeit in a different context, of the doctrine of equivalents sheds light on this question. As the Federal Circuit has explained: The doctrine of equivalents is necessary because one cannot predict the future. Due to technological advances, a variant of an invention may be developed after the patent is granted, and that variant may constitute so insubstantial a change from what is claimed in the patent that it should be held to be an infringement. Such a variant, based on after-developed technology, could not have been disclosed in the patent. Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc., 145 F.3d 1303, 1310 (Fed. Cir. 1998). Where a later infringing variant "could not have been disclosed in the patent," it would be nonsensical to invalidate the patent under § 112 for a failure of the specification to enable the patent's claims to the extent of that variant. While the variant may still infringe the patent under the doctrine of equivalents, there is no § 112 invalidity.8 It is thus of no consequence that the `213 patent specification does not discuss using carbon or anything other than "bulk filler material." The patent's claims under the Court's construction do not literally include carbon or other like materials within their scope, and the specification need not enable what the patent does not claim. The Court has simply found that the addition of carbon to the equation is an insubstantial difference under the doctrine of equivalents. Such a finding does not equate to § 112 invalidity, while it does lead to a finding of infringement on the "body of metal" limitation.

The Court has already determined that BOS 100® and its method of us e do not literally infringe two e le me n t s of Claim 1, the only independent claim of the `213 patent. Thus the ques t io n of infringement fully depends o n the application of the doctrine of equivalents .

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Based on the lack of specific argument or evidence produced by RPI, the Court finds there is no genuine issue for trial as to whether RPI can prove by clear and convincing evidence that the `213 patent is invalid under § 112. Judgment is appropriate as a matter of law declaring the `213 patent ' s specification (1) "enable[s] a person of skill in the art to make and use the full scope of the invention without undue experimentation . . . "; and (2) "describe[s] the invention sufficiently to convey to a person of skill in the art that the patentee had possession of the claimed invention at the time of the application, i.e., that the patentee invented what is claimed." LizardTech, 424 F.3d at 1344- 45. The Court will thus grant Adventus's motion for summary judgment as to § 112 validity and deny RPI's motion as to the same issue. C. Obviousness under 35 U.S.C. § 103 RPI seeks summary judgment that Claims 1, 3, and 6 of the `213 patent are invalid under 35 U.S.C. § 103 in view of prior art not considered by the Patent Examiner during prosecution of the `213 patent.9 Adventus seeks summary judgment that the `213 patent is valid under § 103.1 0 Und e r 35 U.S.C. § 282, issued patents carry a presumption of validity that can only be defeated by clear and convincing evidence. Medical Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1220 (Fed. Cir. 2003). "When, as here, the . . . challenge is an allegation of obviousness, the presumption is that the invention would not have been obvious." Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1570 (Fed. Cir. 1987). Thus RPI must prove by clear and
W h ile both parties moved for s u mma ry judgment as to Claim 2, neither party has briefed the is s u e , and t h e Court does not addres s this is s u e . W h ile A d v e n t u s s t a t e d in its motion for s u mma ry judgment on the `213 patent that it was s e e kin g s u mma ry judgment as to validity under § 103, it failed to argue this point in its brief in s u p p o rt of the motion. See (Do c . No. 200) (mentioning in various places that the `213 patent is non-obvious but failing to mention or argue u n d e r § 103). Even after RPI pointed out A d v e n t u s 's failure to argue the matter, s e e (Doc. No. 166 at 1 n.1), A d v e n t u s did not addres s it, s e e (Doc. No. 175). A d v e n t u s 's arguments in res p o n s e to RPI's motion fo