The Procter & Gamble Company v. Team Technologies, Inc.

Filing 71

ORDER ON CLAIM CONSTRUCTION. Signed by Judge Timothy S. Black on 11/22/2013. (mr1)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF OHIO
WESTERN DIVISION
THE PROCTER & GAMBLE COMPANY, :
:
Plaintiff,
:
:
vs.
:
:
TEAM TECHNOLOGIES, INC., et al.,
:
:
Defendants.
:

Case No. 1:12-cv-552
Judge Timothy S. Black

ORDER ON CLAIM CONSTRUCTION
The parties have submitted briefs in support of their proposed claim constructions.
(Docs. 66, 67, 68, and 69). Additionally, the Court held a Markman hearing on
November 19, 2013.
I.
A.

THE PATENTS AT ISSUE

The ‘453 Patent
The ‘453 Patent, filed in 1998, relates to a tooth whitening delivery system in the

form of strips of flexible material that deliver a tooth whitening substance to a plurality of
adjacent teeth. According to the specification, the invention of the ‘453 Patent is an
improvement over the prior art in that the strips conform to the user’s teeth, but without
permanent deformation, and because there is a substance which causes the strip to adhere
to the tooth while simultaneously containing and delivering the tooth whitening agent.
Another important aspect of the ‘453 Patent is that the strips are “substantially
unnoticeable when worn.” (Doc. 65-1 at 3-13). Claims 1-3, 6-8, 9, 11, 18-19 and 21 are
asserted. Claims 1, 19, and 21 are independent. (Doc. 67 at 1).

B.

The ‘017 Patent
The ‘017 Patent, filed in 1997, is another in the same family of patent applications

that resulted in the ‘453 Patent. The ‘453 and ‘017 Patents share a common specification,
and the file histories of the two patents are nearly identical – several of the office actions
and responses are common to both files, with the differing prosecution history coming
only in the latter stages of the prosecution. The primary difference in the claims of the
‘017 Patent is that the independent claims require that the strip of material have a
particular flexural stiffness as measured using the ASTM test method (these requirements
are part of dependent claims in the’453 Patent). Additionally, the independent claims of
the ‘017 Patent are directed to delivery of “an oral care substance” rather than a “tooth
whitening substance.” (Doc. 65-1 at 14-20). Claims 1-3, 7, 8-9 and 12 are asserted.
Claims 1 and 8 are independent. (Doc. 67 at 2).
C.

The ‘199 Patent
The ‘199 Patent, filed in 2005, claims priority through a number of continuations

and continuations-in-part to the ‘453 Patent and its parent application. The ‘199 Patent is
also directed to a tooth whitening strip, but its specification and claims depart from the
subject matter of the ‘453 and ‘017 Patents in that the ‘199 Patent focuses on the shape of
the tooth whitening strip. The asserted claims of the ‘199 Patent are directed to a strip
that is applied specifically to the facial surfaces (front or outward facing surfaces) of a
plurality of adjacent teeth, folding the strip “about the incisal edges” of the teeth onto the

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lingual surface (surfaces facing the tongue). The claims also deal with the length of time
the strips are worn – i.e., for between 5 and 120 minutes and repeated for about 7 days.
(Doc. 65-1 at 21-33). Claims 17, 20, 23-26 and 28-30 are asserted. Claim 17 is
independent. (Doc. 67 at 2).
II.
Disputed Terms, Phrases
or Clauses
“without permanent
deformation”
“tooth whitening
substance/tooth bleaching
composition/tooth bleaching
substance”
“contacts said
surface/contacts the facial
surfaces”
“almost unnoticeable when
worn/substantially
unnoticeable when worn”
“strip of material/strip of
flexible
material/confor[m]able strip
of material”
“folding a second portion of
the strip of material and
tooth bleaching composition
about the incisal edges of
the plurality of adjacent
teeth”
“gel”

THE CLAIM TERMS AT ISSUE
Patent(s)

Claim(s)

‘453
‘017
‘453

1, 19, 21
1, 8
1, 6-7, 8, 11, 19, 21

‘199

17, 23, 29

‘453
‘017
‘199
‘453
‘017

1, 19, 21
1, 8
17
1
1, 8

‘453
‘017
‘199

1, 2-3, 7, 9, 11, 19, 21
1, 3, 7, 8, 12
17, 29, 30

‘199

17

‘453
‘017

6
2, 9

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III.

STANDARD OF REVIEW

Claim construction is a matter of law to be decided exclusively by the court.
Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en banc),
aff’d, 517 U.S. 370.
“The appropriate starting point [...] is always with the language of the asserted
claim itself.” Comark Comm, Inv. v. Harris Corp., 156 F.3d 1186 (Fed. Cir. 1998).
“[T]he claims of a patent define the invention to which the patentee is entitled the right to
exclude.” Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111,
1115 (Fed. Cir. 2004).
Claim terms are “generally given their ordinary and customary meaning.” Phillips
v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005). “The ordinary and customary
meaning of a claim term is the meaning that the term would have to a person of ordinary
skill in the art in question at the time of the invention, i.e., as of the effective date of the
patent application.” Id. at 1313.
In the event of ambiguity regarding claim terms, courts must first look to the
intrinsic evidence (i.e., the claim itself, the specifications, the prosecution history, and
prior art cited in the patent) to resolve any ambiguities. Vitronics Corp. v. Conceptronic,
Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
“The specification is always highly relevant to the claim construction analysis.
Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.”

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Id. Indeed, “[w]hen the specification explains and defines a term used in the claims,
without ambiguity or incompleteness, there is no need to search further for the meaning
of the term.” Multiform Desiccants, Inc. v. Medzam Ltd., 133 F.3d 1473, 1478 (Fed. Cir.
1998).
The court may also consider “the prosecution history of the patent, if in evidence.”
Vitronics, 90 F.3d at 1582. The prosecution history limits the interpretation of claim
terms so as to exclude any interpretation that was disclaimed during prosecution.
Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995).
In most circumstances, analysis of the intrinsic evidence alone will resolve claim
construction disputes. See Vitronics, 90 F.3d at 1583. However, if the intrinsic evidence
does not resolve ambiguities, extrinsic evidence may be considered. Extrinsic evidence
“can shed light on the relevant art,’ but is less significant than the intrinsic record in
determining the ‘legally operative meaning of disputed claim language.’” C.R. Bard, Inc.
v. United States Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004) (quoting
Vanderlande Indus. Nederland BV v. Int’l Trade Comm’n, 366 F.3d 1311, 1318 (Fed. Cir.
2004)).

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IV.
A.

THE COURT’S CONSTRUCTION OF THE CLAIMS

“without permanent deformation”

Plaintiff’s proposed construction
without permanently conforming to the
shape of the teeth

Defendants’ proposed construction
without irreversible alteration in shape,
structure, or integrity and can recover its
original shape

This term describes the properties and shape of the claimed tooth whitening strip
when placed onto the teeth and when removed from them. The parties’ disagreement
stems from the question of whether the intended focus of this claim term is whether the
strip loses the shape of the user’s teeth when removed or whether it returns to its original
shape when removed.
Plaintiff argues that its proposed construction properly limits this term to the shape
changes that occur when the strip is placed against the teeth. (Doc. 66 at 26). Plaintiff
alleges that the intrinsic record unambiguously shows that the deformation limitation
applies only “to a shape of a tooth.” (Id.) In the language of the claims, the invention
seeks to avoid the strip being permanently deformed to “a shape of a tooth and its
adjoining soft tissue.” (Id.) When a user applies the claimed delivery system to the teeth,
the strip of material is not permanently molded into the shape of the surface of the teeth
being treated, like a strip made of wax or putty might be. (Id. at 26-27). Plaintiff argues
that the ‘017 patent explains that the purpose of this limitation was to distinguish the
invention from prior moldable devices, such as wax- or putty-based systems, that
required pressure to permanently deform the strip into the shape of the teeth. (Id. at 27).
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Defendants argue that the claims use the terms “conform” and “deform” to mean
different things. (Doc. 67 at 5). For example, claim 1 of the ‘453 Patent reads (in part):
“said strip of material being readily conformable to tooth surfaces and to interstitial tooth
spaces without permanent deformation when said delivery system is placed thereagainst.”
(Doc. 65-1 at 12). Defendants argue that a strip that is “conformable” is one that forms to
the shape of the teeth when pressed against the teeth. (Doc. 67-1 at ¶ 42). By contrast,
Defendants argue that “permanent deformation” refers to a permanent and irreversible
deformation to the shape of the strip, such as by altering the shape or the structural
integrity of the strip. (Id. at ¶¶ 32, 42-43.)
The Court agrees with Plaintiff. Defendants’ proposal ignores the claim language
and imports extraneous limitations to require that the strip undergo no irreversible
alterations. Even when the appropriate distinction in meaning is made between the words
“conform” and “deform,” the claim language merely requires that the strip not
permanently deform to the shape of the teeth, not that it not permanently deform at all.
Defendants’ construction is contrary to the specification’s teaching that the strip will not
return to its substantially flat shape and ignores, and potentially excludes, a preferred
embodiment that requires a fresh strip with each application. (Doc. 66 at 27-30). A
claim construction that excludes a preferred embodiment “is rarely, if ever, correct”
because it is unlikely that an inventor would define the invention in a way that excludes a
preferred embodiment. Vitronics, 90 F.3d at 1583-84. Finally, Defendants’ expert, Dr.

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Gaffar, admitted that Defendants’ construction is not supported by any actual language in
the intrinsic record, but only by an inference that he drew from it. (Doc. 66 at 28).
Therefore, the Court adopts Plaintiff’s construction, which is faithful to both the
language of the claims and the intrinsic record as a whole.
B.

“tooth whitening substance/tooth bleaching composition/tooth bleaching
substance”

Plaintiff’s proposed construction
one or more materials that separately or
collectively provide a bleaching active and
adhesive attachment to the teeth

Defendants’ proposed construction
a single, high viscosity liquid, paste, gel, or
solution that has tooth whitening properties

The crux of the parties’ disagreement regarding the construction of this term is the
question of whether or not the substance on the disclosed strip containing whitening
properties can encompass multiple components.
Plaintiff argues that its proposed construction respects the teaching of the
specifications that the tooth whitening substance provides both a bleaching active and
adhesive attachment. (Doc. 66 at 19). Plaintiff argues that the claims explain that the
tooth whitening substance serves both the functions of providing the active and providing
adhesion. (Doc. 65-1 at 12, 19). Plaintiff argues that the specification reinforces the
point that the tooth whitening substance performs both the function of whitening the teeth
and of adhering the delivery system to the teeth during use. (Id. at 17). Finally, Plaintiff
points out that the specification teaches that the tooth whitening substance may be one or
more materials, contained in one or more layers. (Id. at 3, 8, 14, 18).

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Defendants argue that Plaintiff’s proposed construction ignores the claims,
specification, and prosecution history when it proposes that a tooth whitening substance
can be “one or materials” that work separately or collectively to serve both the active and
adhesive functions. (Doc. 67 at 18). Defendants argue that the patents are clear that
there is a single material that provides both of these functions at once and that there
cannot be “one or more” as Plaintiff proposes. (Id.) Defendants argue that “[i]n light of
the clear teachings of the patent specification and claims,” a person of skill in the art
would not adopt a construction that allows “one or more materials” to work “separately
or collectively” to provide the active and the adhesive, and that the term should be
construed to refer solely to the bleaching active described in the patent specifications.
(Doc. 67-1 at ¶107).
The Court agrees with Plaintiff. Defendants’ attempt to narrow the scope of the
claim by requiring the “tooth whitening substance” to be a single layer is contrary to the
intrinsic record. First, Defendants’ construction omits the adhesive component of the
tooth whitening substance, a component Defendants themselves highlight in their
arguments regarding this very claim term. (Doc. 67 at 18). Secondly, the specification
clearly states that the tooth whitening substance may be comprised of one or more
configurations, including layers. (Doc. 65-1 at 3, 8, 14, 18). Finally, if adopted,
Defendants’ construction would limit the claim to a preferred embodiment in which in
substance is “homogenous, uniformly and continuously coated on [the] strip of

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material[.]” (Doc. 65-1 at 8). Defendants’ citations refer to embodiments prefaced by
the word “preferably.” Preferred embodiments should not be read into claims when the
claim language is broader. Electro Med. Sys., S.A., v. Cooper Life Sciences, Inc., 34 F.3d
1048, 1054 (Fed. Cir. 1994); see also Phillips, 415 F.3d at 1320 (labeling the mistake of
“reading a limitation from the written description into the claims” as “one of the cardinal
sins of patent law”). As a general proposition, the Court sees no inherent problem with a
single “substance” being made up of multiple layers or components, and, according to the
intrinsic record, this is, in fact, exactly what the patents disclose.
Therefore, the Court adopts Plaintiff’s construction, which is again faithful to both
the language of the claims and the intrinsic record as a whole.
C.

“contacts said surface/contacts the facial surfaces”

Plaintiff’s proposed construction
contacts the surface of the teeth at any time
while the delivery system is worn

Defendants’ proposed construction
directly contacts the surface upon
application of the strip

The parties’ disagreement regarding the construction of this claim term is a
temporal question about when the contact between the tooth whitening substance and
the teeth actually occurs.
Plaintiff argues that its proposed construction stays true to the language of the
claims, which only require that the tooth whitening substance be in contact with the teeth
for some amount of time while the delivery system is worn. (Doc. 66 at 35). Plaintiff
argues that because the claimed system is designed to be worn for up to around 120

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minutes, the active in the substance may be delivered by contacting the teeth at any point
during that time. (Id. at 37). Plaintiff argues that Defendants’ proposed construction
builds on its flawed construction of “tooth whitening substance,” which requires that the
substance be a single layer, to further require that the substance also be a homogenous
single layer such that the active contacts the tooth immediately upon application of the
system. (Id. at 36). In Plaintiff’s view, Dr. Gaffar’s opinion that a delay of even 30
seconds before the active contacts the tooth falls outside the claim scope is contrary to the
patent disclosures, which explain that the claimed delivery system is designed to whiten
teeth over a period of time. (Id. at 37).
Defendants argue that the patents describe a system in which the active layer and
the adhesive layer are intermixed so that the active ingredient (usually peroxide) contacts
the surface of the teeth immediately upon application of the strip. (Doc. 67-1 at ¶47).
Defendants argue that the claims of the patents make it very clear that there is just one
substance that contains both the adhesive and the active and which directly contacts the
surface of the tooth. Defendants argue that Plaintiff claims to combine the adhesive and
active into a single layer, which means that the active would be immediately in contact
with the tooth surface from the first moment the strip is applied. (Doc. 67 at 9).
Defendants allege that this benefit is described in the patent specification when it touts
the need for a strip that is in contact with the surface of the teeth “for rapid delivery of
an active.” (Doc. 65-1 at 7).

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The Court again agrees with Plaintiff, in part based on its conclusion that a
construction of the prior claim term “tooth whitening substance” that contemplates
multiple layers is appropriate. As established, the patents explain that the adhesive and
active collectively make up the “tooth whitening substance,” which may be comprised of
multiple layers. The claim provides for “a tooth whitening substance applied to said strip
of material such that when said delivery system is placed on a surface of said teeth, said
substance contacts said surface providing an active onto said surface,” and if Defendants’
construction of “contacts said surface” is adopted, would indicate that the active
component also contacts the teeth immediately. In the case of a multi-layered substance,
however, although some part of the substance will “directly contact the surface upon
application of the strip” per Defendant’s proposed construction, the substance will not
necessarily contact the surface and “provid[e] an active onto said surface” immediately
upon contact. It will only contact the teeth and provide the active onto them at some
point during the wearing of the strip, per Plaintiff’s construction. Moreover, contrary to
Defendants’ arguments, “rapid delivery of an active” is not the same as immediate
delivery of an active.
Therefore, the Court adopts Plaintiff’s construction, which accurately reflects the
language of the claims and is logically consistent with the Court’s previously adopted
constructions.

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D.

“almost unnoticeable when worn/substantially unnoticeable when worn”

Plaintiff’s proposed construction
not readily apparent to others when worn

Defendants’ proposed construction
not easily visually detected by another
person when worn

There is no genuine dispute over the construction of this term. Both parties’
proposed constructions are similar, but Defendants’ construction focuses solely on the
likelihood that the strip will be detected visually when worn. Plaintiff argues that the
specification explains that the invention is designed to “permit the wearer to use the
system during social discourse without interfering with the wearer’s speech or
appearance.” (Doc. 65-1 at 16). Defendants merely emphasize 1) that the almost
unnoticeable nature of the strip is based on perceptions of someone other than the wearer
and 2) that “almost unnoticeable” refers to another’s perception of the strip while it is
being worn, not how it is seen while still on the backing tape or when first being applied
to the mouth. (Doc. 67 at 11). Defendants believe either proposed construction is
therefore appropriate. (Id.)
Given that Defendants’ have accepted Plaintiff’s proposed construction, and the
specification refers to either visual or audio detection, the Court adopts Plaintiff’s
construction.

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E.

“strip of material/strip of flexible material/comfor[m]able strip of material”

Plaintiff’s proposed construction
strip of any material suitable for use in the
oral cavity

Defendants’ proposed construction
a strip of polyolefin material that can be
measured according to the standard found
in the patent

The sole dispute over the meaning of this claim term centers on the type of
“material” that must be used for the strip.
Plaintiff argues that its proposed construction is consistent with the patents, which
claim a strip of “material” generally, not a specific type of material. (Doc. 66 at 39). The
specification discloses many options for the strip material – polymers, natural and
synthetic wovens, non-wovens, foil, paper, rubber, etc. (Id.) Plaintiff points out that
when the inventors intended to claim a specific material or limit the claims to a type of
polyolefin, they expressly did so, as several claims require that the strip of material is
made of polyethylene, a type of polyolefin. (Doc. 65-1 at 12-13). Plaintiff further argues
that the patents teach that suitable materials will satisfy certain flexural stiffness
requirements when measured using a Handle-O-Meter. (Doc. 66 at 39). When using a
Handle-O-Meter, one may employ ASTM standard D2923-95, which provides
procedures to overcome the spurious effects of static electricity that may skew the
Handle-O-Meter results for certain materials. (Id. at 40). Plaintiff claims that Defendants
latch onto discussion of this ASTM standard to limit the material used solely to
polyolefin. (Id.) Plaintiff argues that not only is this construction contrary to the patent
specifications, it is based on Dr. Gaffar’s flawed assertion that non-polyolefin materials
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cannot be accurately measured by a Handle-O-Meter using the relevant ASTM standard.
(Id. at 40-41). Plaintiff asserts that Dr. Gaffar admitted in his deposition that this premise
is wrong.
Defendants argue that the claims require a very specific type of material to be
used: “a strip of material having a flexural stiffness less than about 50 grams/centimeter
as measured on a Handle-O-Meter per ASTM test method D2923-95.” (Doc. 67 at 12).
Defendants allege that even where the claims do not explicitly recite measurement using
ASTM test method D2923-95, that standard is nevertheless recited as a requirement for
qualifying the strip of material to be used “in the present invention.” (Id.) Defendants
argue that the ASTM D2923-95 standard is only applicable to polyolefin films, and
therefore the claim must be limited to them. (Id. at 12-13).
The Court again agrees with Plaintiff. First, as Plaintiff points out, the disputed
claims do not recite any specific material and the inventors did refer to specific materials,
including polyolefin, when they intended to do so. (Doc. 65-1 at 12-13, 19-20).
Moreover, the specification expressly teaches that the strip may be made of any number
of materials. (Id. at 9, 18, 29). Some embodiments of the claimed inventions require that
the strip satisfy certain flexural stiffness requirements that can be measured using the
Handle-O-Meter and ASTM standard in question. Defendants’ expert admitted,
however, that the Handle-O-Meter can be used to measure the flexural stiffness of nonpolyolefin materials and that as long as the machine is properly calibrated, a non-

15

polyolefin can be measured using the specified ASTM standard and a valid result can be
obtained. (Doc. 66-2 at 20, 23-24).
Therefore, the Court adopts Plaintiff’s construction, which is faithful to the
specifications and does not attempt to incorporate limitations into the claims absent
sufficient basis to do so.
F.

“folding a second portion of the strip of material and tooth bleaching
composition about the incisal edges of the plurality of adjacent teeth”

Plaintiff’s proposed construction
plain and ordinary meaning (no
construction necessary)

Defendants’ proposed construction
folding . . . in order not to cover up the tips
of the canine teeth

The dispute around this term is whether or not construction is necessary at all.
Plaintiff submits that this claim term is clear on its face. Defendants have also not
asked the Court to construe any of the words in the claim, but rather propose an addition
to the claim language: “in order not to cover the tips of the canine teeth.” Plaintiff
argues, however, that the specification discloses multiple embodiments, one that could
cover the tips of the canine teeth, and others that do not. (Doc. 66 at 43). Plaintiff argues
that Defendants ignore the embodiment that would cover the tips of the canine teeth.
(Id.) Plaintiff points out that when the ellipsis Defendants include in their construction is
replaced with the omitted language from the claim, it becomes clear that Defendants
simply accept the disputed claim language in its entirety (demonstrating that it is clear
and unambiguous on its face), and then import an additional limitation at the end that
does not appear in the claim and is not supported by the specification. (Id. at 42-43).
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Plaintiff argues that while a strip that does not cover the tips of the canine teeth may be a
preferred embodiment, as established, such embodiments are not read into claims absent
specific direction. Finally, Plaintiff argues that Defendants’ construction renders an
embodiment found in dependent claim 22 superfluous, as this claim recites a strip with
“stair-stepped” sides to allow the tips of the canine teeth to be exposed, violating the
doctrine of claim differentiation. Tandon Corp. v. U.S. Int’l Trade Comm’n, 831 F.2d
1017, 1023 (Fed. Cir. 1987).
Defendants argue that the unique aspect of the ‘199 Patent and its ancestor patents
is that it adds a long discussion regarding the particular shape of the tooth whitening
strips to be used. (Doc. 67 at 15). Defendants claim that in that discussion, the inventors
specifically stated repeatedly that the whitening strips must never be folded over the
canine teeth. (Id.) Defendants argue that in the context of the patent specification, a
person of ordinary skill in the art would readily understand the claim to mean that it folds
only over the incisal edges of the teeth and not over the tips, edges, or upper surfaces of
the canine teeth, pre-molars, or molars. (Doc. 67-1 at ¶92). Defendants argue that
Plaintiff’s proposal that no construction is necessary is too simplistic and renders the term
ambiguous. Finally, Defendants argue that canine teeth cannot have an incisal edge,
because canine teeth are not incisors.
The Court once again agrees with Plaintiff. If the claim language Defendants are
directly incorporating into their construction is unambiguous and does not require further

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explanation in and of itself, then Plaintiff is correct and construction is unnecessary.
Despite Defendants’ claims that the inventors specified that the strips never fold over the
canine teeth, there is no patent language to this effect. Discussions of specific
embodiments that do not fold over the canines do not amount to a mandate that in no
embodiment must the strip ever do so. Moreover, Plaintiff has pointed to an embodiment
in the specification which appears to cover the tips of the canine teeth to some degree.
(Doc. 66 at 44-45). As stated, adopting Defendants’ construction would violate the
doctrine of claim differentiation by rendering an embodiment found in a dependent claim
superfluous. Finally, as Plaintiffs point out, incisal edges are indeed found on canine
teeth according to the Oxford English Dictionary. (Doc. 70-2 at 27).
As Defendants have incorporated the entirety of the claim language into their proposed construction, the parties agree that this language is unambiguous, and, therefore,
the Court finds that this claim term is clear on its face and does not require construction.
G.

“gel”

Plaintiff’s proposed construction
Defendants’ proposed construction
a material ranging from near-liquid to near- a single gel with a viscosity between 200 to
solid that resists flow in the steady state
1,000,000 cP at low shear rates and which
has a tacky feeling and provides both the
tooth whitening active and the adhesive
attachment between the strip of material
and the teeth
The parties’ dispute over this term again focuses on whether specific limitations
are appropriately read into the claim.

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Plaintiff argues that its construction reflects the plain and ordinary meaning of
“gel.” (Doc. 66 at 46-47). The patents teach that a wide range of substances having a
wide range of viscosities may be suitable for use with the claimed inventions. The
patents further teach that the substance is preferably a “gel.” (Id. at 46). Plaintiff argues
that Defendants ignore these broad disclosures and, instead, try to limit the meaning of
“gel” to a very specific embodiment based upon preferred properties disclosed in the
patents and additional limitations of Defendants’ own creation. (Id. at 47). Plaintiff
argues that Defendants are attempting to limit the scope of the term “gel” by importing a
specific, preferred embodiment from the specification into the definition and adding four
specific limitations not required by the claims. (Id.) Finally, Plaintiff points out that
Defendants include the disputed term “gel” itself in their proposed construction. (Id.)
Defendants argue that it is clear from the patent specification and claims that when
the whitening substance takes the form of a gel, it must be a single gel that provides both
the active and the adhesive. (Doc. 67 at 19). Defendants argue that their construction
also clarifies the meaning of a “gel” as defined in the specification of the patents. (Id.)
With regard to Plaintiff’s proposed construction, Defendants argue that there is no way
for a person of skill in the art to understand what a “near liquid” or a “near-solid” is,
or how to determine whether a substance “resists flow in the steady state.” (Id. at 20).
The viscosity measurement of the Defendants’ construction comes from the passage of
the ‘453 Patent specification that describes the properties of “the substance of the present

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invention.” (Doc. 65-1 at 10). In the ‘017 Patent, the specification states that the
“preferred gel has a viscosity of between 200 and 1,000,000 cPs at low shear rates.” (Id.
at 18). Defendants argue that from this, a person of ordinary skill in the art would
understand that the substance can take many forms, including liquids, pastes, gel, or other
solutions, but that the preferred embodiment is a gel. (Doc. 67 at ¶111). Thus,
Defendants argue that because claims 2 and 9 specifically narrow the claimed substance
to a gel, the patent’s description of the viscosity and shear rate must also apply.
The Court again agrees with Plaintiff. The inclusion of the claim term itself in
Defendants’ proposed construction is unhelpful to understanding what the term means.
Defendants’ inclusion of “single” is also precluded by the Court’s previous conclusion
that the substance can be composed of multiple layers. Defendants’ expert admitted that
he has heard of the terms “near-liquid” and “near-solid” and that he did not review any
prior art before making the statement that “the art is silent” regarding those terms. (Doc.
68 at 22). The specific viscosity measurement cited refers to the “preferred gel” and is
thus merely a preferred embodiment. As previously established, preferred embodiments
are not appropriately used to limit claims.
Based on the foregoing, the Court adopts Plaintiff’s construction, which does not
repeat the claim term itself or include inappropriate claim limitations.

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V.

CONCLUSION

“The construction that stays true to the claim language and most naturally
aligns with the patent’s description of the invention will be, in the end, the correct
construction.” Phillips, 415 F.3d at 1316 (quoting Renishaw PLC v. Marposs Societa
per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). Therefore, the parties shall construe
the contested terminology of the patents in suit as set forth in this Order.
IT IS SO ORDERED.

Date: 11/22/13

/s/ Timothy S. Black
Timothy S. Black
United States District Judge

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