The Ohio Willow Wood Company v. ALPS South, LLC

Filing 150

ORDER memorializing the 2/2/12 Markman Hearing. Signed by Judge Gregory L Frost on 3/2/12. (sem1)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF OHIO
EASTERN DIVISION
THE OHIO WILLOW WOOD COMPANY,
Plaintiff,

Case No. 2:04-cv-1223
JUDGE GREGORY L. FROST
Magistrate Judge Abel

v.
ALPS SOUTH, LLC,
Defendant.

OPINION AND ORDER
This is a patent infringement case involving Plaintiff The Ohio Willow Wood Company
(“OWW”), and Defendant ALPS South, LLC (“ALPS”). The matter before the Court is a
request for this Court to construe language in the patent, as reexamined, pursuant to Markman v.
Westview Instruments, Inc., 517 U.S. 370, 116 S. Ct. 1384, 134 L. Ed. 2d 577 (1996). The Court
convened a Markman hearing for this purpose on February 2, 2012; also before the Court are the
parties’ various briefs on claim construction (ECF Nos. 138, 139, 141, 142, 143, 144) and the
parties’ Joint Disputed Claim Terms Chart (ECF No. 134-1). Upon full consideration of the
matter, the Court issues this claim construction decision.
I. Background
OWW is the owner of U.S. Patent No. 5,830,237 (“the ’237 patent”). The company
applied for the patent on March 5, 1996, and the patent issued on November 3, 1998. The ’237
patent is titled “Gel and Cushioning Devices” and involves technology related to coverings for
amputees employing a prosthesis. The relevant specification to the patent discloses a device in
the form of a cushioned sock that fits over a residuum, or an amputation stump, so as to provide

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a cushion between the residuum and the artificial limb. The sock has an open end for
introduction of the residuum and a closed end opposite the open end. Additionally, the device
features an inside-the-liner foamed or non-foamed gel coating, preferably comprised of a block
copolymer and mineral oil compound, intended to ease discomfort and undesirable noise effects.
On December 27, 2004, OWW commenced this action, claiming that ALPS has infringed
on the ’237 patent. The parties disputed the language contained within several claims set forth in
the ’237 patent. Much of the disputed claims were linked to Claim 1, which at that time read:
A tube sock-shaped covering for enclosing an amputation stump, said covering
having an open end for introduction of said stump and a closed end opposite said
open end, said covering comprising fabric in the shape of a tube sock coated on only
one side thereof with a foamed or non-foamed gel composition comprising a block
copolymer and mineral oil.
(Pl. Markman Hr’g Ex. 1, col. 13, lines 53-59.)
The parties disputed the meaning of the terms “tube sock shaped” and “coated on only
one side” as used within the above-quoted Claim 1. Following a Markman hearing in January
2006, this Court issued its first claim construction opinion in this case on March 31, 2006. (ECF
No. 50.) As pertinent to the claim construction issue here, the Court construed the term “coated
on only one side” to mean “the presence of a layer of a substance on a surface of a fabric, with
no observable penetration of the substance onto the opposing surface of the fabric.” (Id. at 14.)
In defining the term in this manner, the Court rejected the claim construction proposed by
ALPS. ALPS argued for a definition that precluded the gel composition from “impregnating”
the fabric to any degree whatsoever. In other words, ALPS contended that Claim 1 was
patentable only if the gel composition described in the claim was exclusively on a single surface
of the fabric. Because Claim 1 used the limiting language “on only one side,” ALPS reasoned

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that any impregnation of the gel composition past the “surface” of the fabric would be
inconsistent with the patent as issued. Finding ALPS’s proposed construction unduly restrictive,
this Court reasoned:
[T]he core problem with ALPS’ construction is that it imputes to the patent language
a restriction on the method of manufacturing–impregnating–without necessity. The
company argues that any construction that accepts impregnation would read out of
the clause the restrictive “only.” But the Court neither reads the patent language nor
finds evidence that the patent language was intended to convey that “only” is wholly
preclusive of impregnation here. Rather, the term only targets where the coating lies,
as opposed to where portions of the gel might be present that are unobservable to the
naked eye. In other words, “only” limits where the coating might be, but permits
some of the substance that does not constitute a complete coating to be present
elsewhere–such as into the fabric and imperceptibly to the other side of the fabric.
(Id. at 12 (footnote and internal citations omitted; emphasis in original).)
On October 5, 2006, Dr. Aldo Laghi requested an ex parte reexamination of the ’237
patent by the United States Patent and Trademark Office (“PTO”).1 The PTO Examiner granted
the reexamination request. (ECF No. 138-1; Pl. Markman Hr’g Ex. 9.)2 In his decision granting
the reexamination request, the Examiner found the references cited in Dr. Laghi’s request to
raise “a substantial new question of patentability “with respect to the ’237 patent. (Id. at 7.)
These references included advertisements for products from the Silipos Silosheath product line,
which featured a tube sock-shaped “Single Socket Gel Liner” for amputees to wear over a
residuum. (See id. at 5-8.) One of these references touted the Silosheath product as follows:
“Impregnated with a patented gel, the Silosheath is an expandable nylon prosthetic sheath
designed to disperse shock and vibration on the surface of the residual limb and eliminate skin

1

Dr. Laghi is the President of ALPS. (See Markman Hr’g Tr. 137-38.)

2

This Court stayed all proceedings in this case pending the reexamination. (ECF No. 80.)
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breakdown.” (Def. Markman Hr’g Ex. 8.) Thus, it was apparent during this reexamination that
the Examiner viewed the Silipos Silosheath product line as a potential barrier to the continued
validity of the ’237 patent, at least as it related to Claim 1 and the various claims that are
dependent upon Claim 1.
On March 7, 2008, the Examiner issued a Notice of Intent to Issue Ex Parte
Reexamination Certificate (“NIIRC”) addressing Claim 1 of the ’237 Patent. (ECF No. 139-4;
Pl. Markman Hr’g Ex. 4.) In his Statement of Reasons for Patentability and/or Confirmation, the
Examiner expressly stated that “Claim 1 is patentable because the prior art fails to disclose or
suggest a tube sock-shaped covering for enclosing an amputation stump, wherein the covering
has a coating of a polymeric material residing on only an interior surface thereof.” (Id. at 2
(emphasis in original).)
The Examiner also referred specifically to the reexamination proceeding related to Patent
No. 6,964,688 (the “’688 Patent”), during which the differences between the Plaintiff’s rejected
claims and Silipos Silosheath products were discussed. (Id. at 3.) During the reexamination
proceeding for the ’688 patent, the Examiner noted, the patent owner (OWW) presented a
sample of a Silosheath product that “exhibited gel on its exterior.” (Id.) Proposed amendments
to Claim 1 of the ’688 patent “were discussed in order to more clearly recite that the polymeric
material is resident on only an interior surface of the fabric and does not bleed through to the
outside.” (Id. (emphasis in original).)
With respect to the reexamination of the ’237 patent, the Examiner proposed amending
Claim 1 as follows:
A tube sock-shaped covering for enclosing an amputation stump, said covering
having an open end for introduction of said stump and a closed end opposite said
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open end, said covering comprising fabric in the shape of a tube sock and having a
coating of polymeric material residing on only an interior surface [coated on
only one side] thereof, said polymeric material comprising [with] a foamed or nonfoamed gel composition comprising a block copolymer and mineral oil.
(Id. at 2.)3
The Examiner indicated that this amendment “is seen to overcome the Silipos Silosheath
references” that formed the basis for Dr. Laghi’s reexamination request “since the claim
limitation ‘having a coating of polymeric material residing on only an interior surface therefore
[sic, thereof]’ is expressly defined by the [patent owner] to mean that the polymeric material is
coated on the interior surface of the fabric with no polymeric material bleeding through the
fabric to the exterior surface.” (Id. at 4 (emphasis in original).) On September 2, 2008, the PTO
issued its Ex Parte Reexamination Certificate, which deemed Claim 1 to be patentable as
amended above. (Def. Markman Hr’g Ex. 2, col. 2, lines 6-13.)
Three days after the first reexamination certificate issued, Dr. Laghi requested a second
reexamination of the ’237 patent. Ultimately, the Examiner rejected Claims 1 to 23 of the ’237
patent, a decision that OWW appealed to the Board of Patent Appeals and Interferences
(“BPAI”). (ECF No. 139-7, at 2.)4 After the BPAI reversed the Examiner’s decision to reject
Claims 1 to 23, the PTO issued an Ex Parte Reexamination Certificate on November 29, 2011.
The reexamined patent recited Claim 1 as follows:
A tube sock-shaped covering for enclosing an amputation stump, said amputation
stump being a residual limb, said covering having an open end for introduction of

3

Matter enclosed in brackets appeared in the patent, but was proposed to be deleted by
the Examiner; matter printed in bold underline indicates additions proposed by the Examiner.
4

Claim 1 was amended for purposes of appeal to the BPAI, but the terms “coating” and
“residing on only an interior surface” remained undisturbed in the claim as amended for appeal.
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said [stump] residual limb and a closed end opposite said open end, said covering
comprising fabric in the shape of a tube sock [and], said fabric having a coating
of [polymeric material] a foamed or non-foamed block copolymer and mineral oil
gel composition residing on only an interior surface thereof[, said polymeric
material comprising a foamed or non-foamed gel composition comprising a block
copolymer and mineral oil].
(ECF 139-3 and Def. Markman Hr’g Ex. 3, at col. 2, lines 4-15.)5
Following the two reexaminations, the parties continue to dispute the import of language
within Claim 1. The dispute in this Markman proceeding surrounds the phrase “ having a
coating of a foamed or non-foamed block copolymer and mineral oil gel composition residing on
only an interior surface thereof.” (ECF No. 134-1, Joint Disputed Claim Terms Chart.)
II. Claim Construction
A. Standards Involved
“It is a bedrock principle of patent law that the claims of a patent define the invention to
which the patentee is entitled the right to exclude.” Arlington Indus. v. Bridgeport Fittings, Inc.,
632 F.3d 1246, 1253 (Fed. Cir. 2011) (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1312
(Fed. Cir. 2005) (en banc) (internal quotations omitted)); see also Innova/Pure Water, Inc. v.
Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004). The purpose of a
Markman hearing is to ascertain the meaning of a patent’s claims so that it is clear precisely
what has been patented and, by consequence, the protections the patent therefore affords the
patent holder. See Phillips, 415 F.3d at 1312. See also Markman v. Westview Instruments, Inc.,
52 F.3d 967, 978 (Fed. Cir. 1995) (“When a court construes the claims of the patent . . . the court
is defining the federal legal rights created by the patent document”), aff’d, 517 U.S. 370 (1996).

5

Matter in bold brackets appeared in the patent, but was deleted and is no longer part of
the patent; matter printed in italics indicates additions made to the patent.
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There is no “rigid algorithm for claim construction.” Phillips, 415 F.3d at 1324. Rather,
in construing the meaning of a patent’s claims, the Court is guided by a set of principles that the
Federal Circuit has described as follows:
The claim terms “ ‘are generally given their ordinary and customary meaning.’ ” Id.
(quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).
“The inquiry into how a person of ordinary skill in the art understands a claim term
provides an objective baseline from which to begin claim interpretation.” Id.
“Importantly, the person of ordinary skill in the art is deemed to read the claim term
not only in the context of the particular claim in which the disputed term appears, but
in the context of the entire patent, including the specification.” Id. “In examining
the specification for proper context, however, this court will not at any time import
limitations from the specification into the claims.” CollegeNet, Inc. v. Apply
Yourself, Inc., 418 F.3d 1225, 1231 (Fed. Cir. 2005) (citing Teleflex, Inc. v. Ficosa
N. Am. Corp., 299 F.3d 1313, 1326 (Fed. Cir. 2002)).
Varco, L.P. v. Pason Sys. USA Corp., 436 F.3d 1368, 1372-73 (Fed. Cir. 2006). The starting
point in claim construction therefore lies with the language of the claims themselves. In
considering a patent’s language, a court should apply the plain meaning rule, presumptively
giving claim terms their ordinary, plain meaning. Teleflex, 299 F.3d at 1325. A court may,
however, depart from a term’s plain meaning if the patentee has acted as a lexicographer or
otherwise limited the scope of the invention through a clear disclaimer in the specification or
prosecution history. Phillips, 415 F.3d at 1316-17.
Of considerable import to claim construction is the intrinsic evidence, which includes the
claim language, the specification, and the prosecution history as applicable. World Kitchen
(GHC), LLC v. Zyliss Haushaltwaren AG, 151 F. App’x 970, 972 (Fed. Cir. 2005) (citing
Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001));
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). When this intrinsic
evidence provides an unambiguous description of the scope of the invention, reliance on

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extrinsic evidence is improper. Vitronics Corp., 90 F.3d at 1582-83.
But although less significant than intrinsic evidence, extrinsic evidence is still of value to
claim construction when necessary. Phillips, 415 F.3d at 1317. This latter category
encompasses such things as expert and inventor testimony, as well as texts such as treatises and
dictionaries. Id. (quoting Markman, 52 F.3d at 980). A court may entertain expert testimony for
numerous purposes, such as
to provide background on the technology at issue, to explain how an invention
works, to ensure that the court’s understanding of the technical aspects of the patent
is consistent with that of a person of skill in the art, or to establish that a particular
term in the patent or the prior art has a particular meaning in the pertinent field.
Phillips, 415 F.3d at 1318. The value of expert testimony in regard to claim construction is
qualified, however, as an expert cannot offer an opinion of any value that is at odds with the
intrinsic evidence of a patent. Id. (quoting Key Pharms. v. Hercon Labs. Corp., 161 F.3d 709,
716 (Fed. Cir. 1998)); Playtex Prods., Inc. v. Procter & Gamble Co., 400 F.3d 901, 908 n.1 (Fed.
Cir. 2005).
With these governing principles in mind, the Court now turns to the parties’ competing
positions on the construction of Claim 1.
B.

Disputed Claim Term

The disputed claim term before the Court consists of 22 words: “having a coating of a
foamed or non-foamed block copolymer and mineral oil gel composition residing on only an
interior surface thereof.” (ECF No. 134-1.) As a practical matter, only 10 of these words are
truly in dispute between OWW and ALPS. The parties’ disagreement boils down to the meaning
of “having a coating . . . residing on only an interior surface thereof.” The parties have very
different views on how much of the “gel composition” can appear on the surface opposite the
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“interior surface.”
1.

Proposed Constructions of the Parties

OWW proposes that the Court construe the disputed term exactly the same way as it
construed the term “coated on only one side” in connection with the Markman proceeding before
reexamination. (See ECF No. 50.) There, the Court construed “coated on only one side” (as that
term existed in the ’237 patent before reexamination) to mean “the presence of a layer of a
substance on a surface of a fabric, with no observable penetration of the substance onto the
opposing surface of the fabric.” (Id. at 14.) OWW posits that the reexamined term “having a
coating . . . residing on only an interior surface thereof” likewise means that the gel composition
“is present as a layer on a surface of a fabric, with no observable penetration of the substance
onto the opposing surface of the fabric.” (Joint Disputed Claim Terms Chart, ECF No. 134-1;
see also Pl. Br., ECF No. 139, at 9-10.)
For its part, ALPS pushes for a much narrower construction of Claim 1 with respect to
where the gel composition can be found on the fabric of the tube sock-shaped covering described
in the ’237 patent. ALPS proposes that the Court construe the disputed term to mean “covered
or spread with a layer of a substance on top of the inside of a fabric, with no penetration of the
substance into the fabric.” (Joint Disputed Claim Terms Chart, ECF No. 134-1; see also Def.
Br., ECF No. 138, at 9-12.) In other words, ALPS contends that the term “having a coating . . .
residing on only an interior surface thereof” means that none of the gel substance whatsoever
may penetrate into the fabric; even if the gel composition did not penetrate to the opposing
surface of the fabric (i.e., opposite the “interior surface”), ALPS argues that any penetration past
the “top of the inside of a fabric” would be inconsistent with Claim 1, as reexamined.

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ALPS’s argument relies heavily on the fact that Claim 1 was amended after
reexamination to change the language previously construed by this Court. Because the language
was amended specifically “to overcome prior art” (namely, the Silosheath product line), ALPS
says it is “nonsensical” to give the amended language the same definition as the Court did the
original claim. (Def. Br., ECF No. 138, at 8-9.)
ALPS contends that further support for its proposed construction is found in the amended
claim’s change in language from coating being “on only one side” to “residing on an interior
surface.” (Def. Br., ECF No. 138, at 9.) In ALPS’s view, “[i]f the composition can only be on
the surface, it cannot penetrate into the fabric” because if it did, “it would no longer be only on
the surface.” (Id. (emphasis in original).) For good measure, ALPS says that the term “residing”
also indicates that the gel composition must be only on the “interior surface,” without any
penetration of the fabric. (Id. at 11.) As further support for this position, ALPS contends that
the term “coating” suggests the absence of penetration into the fabric because “coating” is
defined principally as a “coat, covering.” (Id. (citing Merriam-Webster dictionary definition of
“coating”).) And a “covering is not typically something that penetrates or seeps into whatever it
is on top of.” (Id.)
2.

The Court’s Claim Construction

As in the previous claim construction proceeding in this case, the Court finds neither
party’s proposed construction to be satisfactory. (See ECF No. 50, at 12.) On the one hand, the
Court agrees with ALPS that the amendments made by the PTO after reexamination must be
given effect and that OWW’s proposed adoption of the identical construction this Court
previously gave the original claim language does not give due respect to the amendments. On

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the other hand, however, the Court find that ALPS’s proposed construction goes too far in its
restriction of where the gel composition can be found on the tube sock-shaped covering. ALPS’s
construction is inconsistent with the intrinsic record, which, even after reexamination,
contemplates some penetration of the gel substance into the fabric.
As the Court noted above, reliance on extrinsic evidence in the claim construction
process is unnecessary where the intrinsic evidence (e.g., the patent specification and file
history) unambiguously describes the scope of the invention at issue. See Vitronics Corp., 90
F.3d at 1582. Here, the Court need not go further than the intrinsic evidence in deciding the
proper construction of the disputed language of the ’237 patent. Based on the intrinsic evidence,
the Court finds that the amended language of Claim 1 contemplates some penetration of the gel
composition into the fabric, so long as the substance does not bleed through to the exterior
surface of the fabric.
Important to this Court’s analysis is the Examiner’s NIIRC, issued in connection with the
first reexamination. (ECF No. 139-4 and Pl. Markman Hr’g Ex. 4.) In his Statement of Reasons
for Patentability and/or Confirmation, the Examiner referred specifically to the Silosheath
product line and the differences between the Silosheath products and the subject matter of the
’688 and ’237 patents, differences that were discussed with OWW’s representatives during the
reexamination process. (Id. at 3.) As to the ’237 patent, the Examiner proposed that Claim 1 be
amended to include the language now at issue in this proceeding. According to the Examiner’s
Statement, the amendment “is seen to overcome the Silipos Silosheath references that formed the
basis upon which the reexamination request was built” since OWW expressly defined “having a
coating of polymeric material residing on only an interior surface” in Claim 1 “to mean that the

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polymeric material is coated on the interior surface of the fabric with no polymeric material
bleeding through the fabric to the exterior surface.” (Id. at 4 (second emphasis added).)
The term “polymeric material” was eventually changed to “a foamed or non-foamed
block copolymer and mineral oil gel composition.” (See Ex Parte Reexamination Certificate,
Def. Markman Hr’g Ex. 3.) But the amended claim’s description of where the substance was
located did not change. More to the point, amended Claim 1 embodies the understanding
between the PTO Examiner and OWW (i.e., the patent owner) that the gel composition can bleed
into the fabric so long as it does not bleed all the way through to the exterior surface. (ECF No.
139-4 at Pl. Markman Hr’g Ex. 4, at 4.) That the PTO Examiner had this understanding of the
patented invention makes it evident that the term “residing on only an interior surface thereof”
does not foreclose some penetration of the fabric by the gel substance, so long as the substance
does not bleed through all the way to the exterior surface.
For this reason, the Court cannot accept ALPS’s proposed construction, which would
foreclose any “penetration” of the gel composition into the fabric. When the Court construed
Claim 1 as it existed before reexamination, ALPS took a similar position with respect to whether
the term “coated on only one side” meant that the substance could “impregnate” the fabric.
(ECF No. 50, at 11.) ALPS argued for a construction that would have prevented any
impregnation of the fabric. (Id.) This Court rejected such a restriction, finding it problematic
“that it imputes to the patent language a restriction on the method of manufacturing –
impregnating – without necessity.” (Id. at 12.) The Court construed the term “only” as speaking
to “where the coating lies, as opposed to where portions of the gel might be present that are
unobservable to the naked eye. In other words, ‘only’ limits where the coating might be, but

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permits some of the substance that does not constitute a complete coating to be present
elsewhere–such as into the fabric and imperceptibly to the other side of the fabric.” (Id.
(emphasis in original).)
ALPS essentially reprises its argument in this Markman proceeding, contending that the
amended language in Claim 1 (“having a coating . . . residing on only an interior surface
thereof”) supports a claim construction that categorically forecloses any “penetration” of the gel
substance into the fabric. (See ECF No. 138, Def. Br., at 9-12.) ALPS explains that this Court’s
rationale in construing the original claim language “made sense when the claim language spoke
of only one side, given that by its ordinary meaning, one side could potentially mean that the
substance could be anywhere on the one side (i.e. penetrating through one side) as long as it did
not come through and appear on the other side.” (Id. at 9.) But now that the claim language says
that the coating is “residing” on the “interior surface” of the fabric, ALPS argues that the Court’s
previous reasoning is no longer applicable because the gel composition “cannot penetrate into
the fabric” if it can only be on the surface. (Id.)
But this Court does not read the amended language to command the categorical
elimination of the possibility that the gel composition may penetrate the interior surface of the
fabric. Accepting ALPS’s reading of the amended language would require this Court to
overlook the significant term “coating,” which still appears in the amended Claim 1. The
amended language of Claim 1 says that the “coating” must reside “on only an interior surface” of
the fabric. In this sense, the amended claim language is no different than the original claim
language. Just as the original claim language did, the amended language (“residing on only an
interior surface”) likewise speaks to where the coating lies as opposed to where portions of the

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gel substance might be found. (See ECF No. 50, at 12.) The amended claim language does not
prevent some of the gel substance from penetrating into the interior surface of the fabric, so long
as there is no “coating” of it present on the exterior surface of the fabric.
In this vein, the Court is unpersuaded by ALPS’s argument that the term “coating”
somehow forecloses any penetration of the substance beyond the “interior surface.” ALPS
contends that a “coating” of something “is not typically something that penetrates or seeps into
whatever it is on top of.” (ECF No. 138, at 11.) Regardless of whether this is true in a general
sense, it misses the point. A “coating” of a substance can be present on the surface of a fabric
while still having some of the substance penetrate (or bleed into) the fabric. Penetration by itself
does not create a coating; it is only when the surface has a gel composition on it that a coating
exists. The premise that “coating” and “penetration” are mutually exclusive concepts is a false
premise that is not supported by the intrinsic record. So long as a “coating” of the gel substance
described in the ’237 patent resides on only the interior surface, some bleed-through of the
substance into but not through the fabric is consistent with the amended language of Claim 1.
Even though the Court disagrees with ALPS’s proposed construction, the Court also does
not find well taken OWW’s proposal that the Court apply the same claim construction to the
disputed term of Claim 1 as it did prior to the reexamination. While OWW proposes a
construction that would allow some of the gel substance to be present on the exterior surface of
the fabric, so long as it is not “observable” (see ECF No. 134-1, at Col. 2), the Court finds this
construction inconsistent with what the PTO Examiner contemplated and what OWW agreed to
on reexamination. As the Examiner noted in his reasons supporting patentability following the
first reexamination, the Examiner proposed the amended Claim 1 language to overcome the

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Silipos Silosheath products, which were similar to OWW’s claimed invention, but which the
Examiner understood to have gel on the exterior surface of them. (ECF No. 139-4 and Pl.
Markman Hr’g Ex. 4, at 3-4.) The Examiner and OWW therefore agreed to define the amended
Claim 1 language “to mean that the polymeric material is coated on the interior surface of the
fabric with no polymeric material bleeding through the fabric to the exterior surface.” (Id. at 4
(second emphasis added).)
This language convinces the Court that the Examiner’s understanding of what was
granted in amended Claim 1 is slightly different than before. The Examiner presumably had
before him this Court’s previous claim construction decision in which this Court interpreted the
original claim language to mean that the substance could penetrate the fabric all the way through
to the “opposing surface” so long as the penetration was not “observable” on the opposing
surface. (ECF No. 50, at 14.) The Examiner’s statement in the NIIRC, however, does not
contemplate that the gel substance will bleed through to the exterior surface at all. Thus, the
Court disagrees with OWW’s position that there can be penetration onto the “opposing surface”
as long as the substance is not “observable” on the “opposing surface.” Based on the Examiner’s
understanding of what he was approving in the reexamined Claim 1, the Court concludes that the
amended language means that there can be no gel substance, observable or otherwise, on the
exterior surface of the fabric. While penetration of the gel substance into the interior surface of
the fabric remains acceptable under the amended language of Claim 1, there can be no
penetration (or bleeding through) of the substance onto the uncoated exterior surface.
For the foregoing reasons, the Court concludes that what was approved in the reexamined
’237 patent’s use of the words “having a coating of a foamed or non-foamed block copolymer

15

and mineral oil gel composition residing on only an interior surface thereof” is a clause meaning
“having a layer of a block copolymer and mineral oil gel composition on the interior surface of a
fabric, with no penetration of the substance reaching the exterior surface of the fabric.”
III. Conclusion
The Court concludes that the foregoing claim construction controls. The parties shall
therefore proceed in a manner consistent with the conclusions of this Opinion and Order.
IT IS SO ORDERED.
/s/ Gregory L. Frost
GREGORY L. FROST
UNITED STATES DISTRICT JUDGE

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