Packless Metal Hose, Inc. v. EXTEK ENERGY EQUIPMENT (ZHEJIANG) CO., LTD. et al

Filing 101

MEMORANDUM OPINION AND ORDER. Signed by Judge Rodney Gilstrap on 1/23/2013. (ch, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION

PACKLESS METAL HOSE, INC.

§
§
§ CIVIL ACTION NO. 2:09-CV-265-JRG
§
§
§

Vs.
EXTEC ENERGY EQUIPMENT
(ZHEJIANG) CO., LTD., ET AL

MEMORANDUM OPINION AND ORDER
Before the Court is the parties’ claim construction briefing. The Court held a claim
construction hearing on September 27, 2012. The Court has considered the parties’ arguments,
the relevant portions of the record, and the applicable law. This Memorandum Opinion and
Order addresses the parties’ various claim construction disputes. The Court will first discuss the
technology of the patents-in-suit and then turn to the merits of the claim construction issues.
I.

BACKGROUND AND THE PATENTS-IN-SUIT
This case involves heat exchanger technology. In particular, this case involves heat

exchangers constructed with helically convoluted heat exchange elements. Plaintiff Packless
Metal Hose, Inc. (“Packless”) is the owner of United States Patent Nos. 5,409,057 (“the ’057
Patent”) and 5,551,504 (“the ’504 Patent”). The ’504 Patent is a divisional of the ’057 Patent.
For ease of reference, the Court will cite to the specification of the ’057 Patent.
In the Background of the Invention, the patentee observes that finned heat exchange
elements are well known in the art for use in radiators, heat exchangers, refrigerators, and
condensers, ’057 Patent, 1:14-15. For example, in an automobile radiator, the heat from the
engine coolant passes from the coolant to the interior surface of the radiator and then onto the

1

metal fins that extend from the body of the radiator. A fan blows air into the fins and away from
the radiator.
Helically convoluted heat exchangers were also known in the art.

They operate

somewhat differently from a finned heat exchanger. By creating spiral-shaped channels in the
walls of a metal tube, the surface area of the interior wall is increased, and the fluid passing
through the tube is turbulated so that more of the fluid passing through the tube comes into
contact with the wall. A tube made from metal like copper easily conducts heat through the
metal from the interior wall of the tube to the exterior. By creating spiral channels in the tube,
the heat spreads away more evenly and efficiently from the fluid to the wall of the tube than it
would through a tube that is not “helically convoluted.”

Methods for making helically

convoluted exchangers are described in U.S. Patent Nos. 4,377,083 and 4,514,997. ’057 Patent
1:15-22.
The patents-in-suit claim improvements over the prior art. As described in the Summary
of the Invention:
An embodiment of the invention relates to a multi-passage heat
exchange element which includes a central first fluid passage for
passage of a first fluid of a heat exchanger, a plurality of
substantially helically convoluted second fluid passages for a
second fluid of a heat exchanger, the second fluid passages
substantially helically surrounding at least a portion of the first
fluid passage, and a plurality of substantially helically convoluted
first fluid passages substantially surrounding at least a portion of
the second fluid passages.
The specification explains the manufacturing process for an embodiment of the improved
heat exchanger element. According to the specification, the process begins by tapering the ends
of a metal tube with a tapering die. The tube, with its tapered ends, is depicted in Figure 3:

2

The tapered tube is then passed into a tube corru
T
t
p
ugating die a shown in F
as
Figures 4-5. The
die teeth are arrange so that wh the tapered tube is p
ed
hen
passed into t die and the die is ro
the
otated
e
r
be
cally convolu
uted heat ex
xchange elem
ment depict in
ted
about the tube, the resulting tub is a helic
Figure 6, a cross-sect
,
tion of which is shown in Figure 7:
h

3

The specifica
T
ation explains that this process fa
acilitates the production of channels 88
e
n
which lat become passages 5. ’057 Patent 21-40. A
ter
p
t,
Although the corrugated t
tube 82 show in
wn
Figure 7 may be used as a heat exchange ele
e
ement, the sp
pecification explains tha preferably the
at,
y,
corrugate tube 82 is passed thro
ed
s
ough a reduc
cing die as sh
hown in Figu 8 and 9 Essentially, the
ures
9.
reducing die compr
resses the tu to redu its diam
ube
uce
meter.

By d
doing so, th channels and
he
s

corrugati
ions depicte in Figure 7 are form into p
ed
e
med
passages.

“
“The resulta multi-passage
ant

element is shown in FIGS. 10-11.” ’057 Pate at 3:50-5
i
F
ent,
51.
Figures 10 an 11 show a side view and cross-sec
nd
a
ction of an e
example of th improved heat
he
d
exchange element:
e

4

The preferred embodimen of the hea exchange element sho
T
d
nt
at
own in Figs. 10 and 11 has a
central passage 3 th
p
hrough whic a first flu may flo surround by heli
ch
uid
ow,
ded
ically convo
oluted
second fl
luid passage 5, through which a sec
es
h
cond fluid m flow. Th fluid from the central first
may
he
m
fluid pas
ssage may be directed in the helic
nto
cally convol
luted first flu passages 7 that surr
uid
s
round
the secon fluid pas
nd
ssages. The arrangemen of the hel
nt
lically convo
oluted passa improve the
age
es
efficiency of the he exchanger, and, as the results of the exp
y
eat
periment cited in the p
patent
demonstr
rate, this con
nfiguration also allows the elements to be const
a
t
s
tructed with a smaller sq
quare
footage of physical heat transfer area. ’057 Patent at 5:4
o
h
P
44-6:27.
II.

LE
EGAL PRIN
NCIPLES
“A claim in a patent prov
A
vides the me and boun of the ri
etes
nds
ight which the patent co
onfers

protected in
on the pa
atentee to ex
xclude others from makin using or selling the p
s
ng,
r
nvention.” B
Burke,
Inc. v. Br
runo Indep. Living Aids, Inc., 183 F. 1334, 13 (Fed. Ci 1999). Cl
L
.3d
340
ir.
laim constru
uction
is an issu of law for the Court to decide. Markman v. Westview In
ue
r
t
M
nstruments, I
Inc., 52 F.3d 967,
d
970-71 (F Cir. 199 (en banc aff’d, 517 U.S. 370 (1
Fed.
95)
c),
7
1996).
To ascertain the meaning of claims, the Court loo to three primary sou
T
t
t
oks
urces: the claims,
the speci
ification, and the prosecu
d
ution history Markman 52 F.3d at 979. The sp
y.
n,
pecification must
contain a written des
scription of the invention that enable one of ord
t
n
es
dinary skill i the art to m
in
make

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and use the invention. Id. A patent’s claims must be read in view of the specification, of which
they are a part. Id. For claim construction purposes, the description may act as a sort of
dictionary, which explains the invention and may define terms used in the claims. Id. “One
purpose for examining the specification is to determine if the patentee has limited the scope of
the claims.” Watts v. XL Sys., Inc., 232 F.3d 877, 882 (Fed. Cir. 2000).
Nonetheless, it is the function of the claims, not the specification, to set forth the limits of
the patentee’s invention. Otherwise, there would be no need for claims. SRI Int’l v. Matsushita
Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). The patentee is free to be his own
lexicographer, but any special definition given to a word must be clearly set forth in the
specification. Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1388 (Fed. Cir. 1992).
Although the specification may indicate that certain embodiments are preferred, particular
embodiments appearing in the specification will not be read into the claims when the claim
language is broader than the embodiments. Electro Med. Sys., S.A. v. Cooper Life Sciences, Inc.,
34 F.3d 1048, 1054 (Fed. Cir. 1994).
The Court’s claim construction decision must be informed by the Federal Circuit’s
decision in Phillips v. AWH Corporation, 415 F.3d 1303 (Fed. Cir. 2005) (en banc). In Phillips,
the Court set forth several guideposts that Courts should follow when construing claims. In
particular, the Court reiterated that “the claims of a patent define the invention to which the
patentee is entitled the right to exclude.”

415 F.3d at 1312 (emphasis added) (quoting

Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1115 (Fed. Cir.
2004)). To that end, the words used in a claim are generally given their ordinary and customary
meaning. Id. 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

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of the effective filing date of the patent application.” Id. at 1313. This principle of patent law
flows naturally from the recognition that inventors are usually persons who are skilled in the
field of the invention and that patents are addressed to and intended to be read by others skilled
in the particular art. Id.
Despite the importance of claim terms, Phillips made clear that “the person of ordinary
skill in the art is deemed to read the claim terms 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. Although the claims themselves may provide guidance as to the meaning of
particular terms, those terms are part of “a fully integrated written instrument.” Id. at 1315
(quoting Markman, 52 F.3d at 978). Thus, the Phillips Court emphasized the specification as
being the primary basis for construing the claims. Id. at 1314-17. As the Supreme Court stated
long ago, “in case of doubt or ambiguity it is proper in all cases to refer back to the descriptive
portions of the specification to aid in solving the doubt or in ascertaining the true intent and
meaning of the language employed in the claims.” Bates v. Coe, 98 U.S. 31, 38 (1878). In
addressing the role of the specification, the Phillips Court quoted with approval its earlier
observations from Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir.
1998).
Ultimately, the interpretation to be given a term can only be
determined and confirmed with a full understanding of what the
inventors actually invented and intended to envelop with the claim.
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.

Consequently, Phillips emphasized the important role the

specification plans in the claim construction process.

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The prosecution history also continues to play an important role in claim interpretation.
Like the specification, the prosecution history helps to demonstrate how the inventor and the
Patent and Trademark Office (“PTO”) understood the patent. Id. at 1317. Because the file
history, however, “represents an ongoing negotiation between the PTO and the applicant,” it may
lack the clarity of the specification and thus be less useful in claim construction proceedings. Id.
Nevertheless, the prosecution history is intrinsic evidence that is relevant to the determination of
how the inventor understood the invention and whether the inventor limited the invention during
prosecution by narrowing the scope of the claims. Id.
Phillips rejected any claim construction approach that sacrificed the intrinsic record in
favor of extrinsic evidence, such as dictionary definitions or expert testimony. The en banc
Court condemned the suggestion made by Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d
1193 (Fed. Cir. 2002), that a Court should discern the ordinary meaning of the claim terms
(through dictionaries or otherwise) before resorting to the specification for certain limited
purposes.

Phillips, 415 F.3d at 1319-24.

The approach suggested by Texas Digital—the

assignment of a limited role to the specification—was rejected as inconsistent with decisions
holding the specification to be the best guide to the meaning of a disputed term. Id. at 1320-21.
According to Phillips, reliance on dictionary definitions at the expense of the specification had
the effect of “focus[ing] the inquiry on the abstract meaning of words rather than on the meaning
of claim terms within the context of the patent.” Id. at 1321. Phillips emphasized that the patent
system is based on the proposition that the claims cover only the invented subject matter. Id.
What is described in the claims flows from the statutory requirement imposed on the patentee to
describe and particularly claim what he or she has invented. Id. The definitions found in

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dictionaries, however, often flow from the editors’ objective of assembling all of the possible
definitions for a word. Id. at 1321-22.
Phillips does not preclude all uses of dictionaries in claim construction proceedings.
Instead, the Court assigned dictionaries a role subordinate to the intrinsic record. In doing so, the
Court emphasized that claim construction issues are not resolved by any magic formula. The
Court did not impose any particular sequence of steps for a Court to follow when it considers
disputed claim language. Id. at 1323-25. Rather, Phillips held that a Court must attach the
appropriate weight to the intrinsic sources offered in support of a proposed claim construction,
bearing in mind the general rule that the claims measure the scope of the patent grant.
III.

CONSTRUCTION OF DISPUTED TERMS
The parties have presented five terms for construction. The Court will discuss each in

turn.
A.

“substantially helically convoluted second fluid passages” (’057 Patent,
Claim 1; ’504 Patent, Claims 1, 21, and 37)

Plaintiff’s Proposed Construction
Multiple elongated passages that are
substantially helically convoluted and
substantially surround at least a portion
of the central first fluid passage, for the
passage of a second fluid which is
different from the first fluid.

Defendant’s Proposed Construction
Multiple elongated passages, which are distinct from
the central first fluid passage and the first fluid
passages, of the metal tubing heat exchange element
that are substantially helically convoluted and
substantially helically surround at least a portion of the
central first fluid passage, for the passage of a second
fluid which is different from the first fluid.

The primary dispute between the parties is the definition of a “passage” and whether the
second fluid passages must be “distinct from” the central first fluid passages.
Read as a whole, the specification resolves the parties’ dispute.

The specification

describes both “channels,” which are not distinct from the central first fluid passage, and

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“passages,” which are distinct from the central first fluid passage. In particular, when the
specification describes Figures 6 and 7, it states:
It is believed that the larger head portions 84 and the thinner neck
portions 86 in the corrugations 80 facilitate production of channels
88, which later become passages 5 in the finished element.
‘057 patent at 3:28-32 (emphasis added). This passage indicates that channels and passages are
two different things. It also indicates that, contrary to the Plaintiff’s argument, Figure 7 is not an
embodiment of the invention.
In addition, when describing the manufacturing process, the specification explains that
the heat exchange element described in Figures 6 and 7 is passed through an additional die.
Once again, the specification draws a distinction between the channels shown in Figures 6 and 7
and the “multi-passage” element shown in Figures 10 and 11. See ‘057 patent at 3:50-51 (“[t]he
resultant multi-passage element is shown in FIGS. 10-11”).
Finally, the patent describes directing the second fluid from “channels 88” into the
“passages 5” of the heat exchange element. ’057 patent at 3:61-64. This, too, illustrates that
channels and passages are different things in the patents.
In every discussion or illustration of “passages” in the patent, the passage is shown as a
distinct, or enclosed, path through which fluid may flow. The cross-sectional depictions of the
heat exchange element through the manufacturing process shows that a channel opens into a
central portion of the tubing.

The passages, however, are surrounded by walls on their

perimeters.
The other limitations in the claims also support this construction. The claims require the
fluids in the central first fluid passage and the helically convoluted second fluid passages to be
different fluids. The illustrative experiment used water as the first fluid and Freon as the second
fluid. Although some fluid leakage between the passages may occur as a result of pressure
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differentials and the hydraulic efficiency of the passages, ’057 patent at 4:34-44, the specification
nevertheless supports Defendant’s argument that the passages be distinct from one another.
Although the Court agrees with the Defendant that the passages must be distinct from
each other, the Court rejects the other limitations included in the Defendant’s definition.
Defendant’s construction also requires that the heat exchange element be made of “metal tubing”
and that the second passages substantially helically surround at least a portion of the central first
fluid passage. Although the preferred embodiment describes a manufacturing process directed
toward a metal tube with thin walls, nothing in the claims requires the heat exchange element to
be constructed from metal. In addition, although the claim requires the second fluid passages to
be helically convoluted, the claim language does not explicitly require that the passages helically
surround the central first fluid passages. The Defendant’s brief does not attempt to support these
additional limitations, and the Court declines to import them into the construction of this term.
Accordingly, the Court hereby construes the term “substantially helically convoluted
second fluid passages” to mean “multiple elongated passages, distinct from the central first
fluid passage and the first fluid passages, that are substantially helically convoluted.” The
balance of the claim language needs no additional construction.
B.

“substantially helically convoluted first fluid passages” (’504 Patent, Claims
1 and 21)

The disputes with respect to this term are the same as with respect to the previous term.
For the same reasons described above, the Court concludes that the passages are distinct from
one another. Accordingly, the Court hereby construes “substantially helically convoluted first
fluid passages” to mean “multiple elongated passages, distinct from the central first fluid
passage and the second fluid passages, that are substantially helically convoluted.” The
balance of the claim language needs no additional construction.

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C.

“passageway” (’057 Patent, Claims 1 and 21)

Plaintiff’s Proposed Construction
a passage by which fluid can travel

Defendant’s Proposed Construction
a passage of the metal tubing heat exchange element
connecting the central first fluid passage to at least one of
the substantially helically convoluted first fluid passages
through which the first fluid can pass from the central
first fluid passage to the at least one of the substantially
helically convoluted first fluid passages, and from the at
least one of the substantially helically convoluted first
fluid passages to the central first fluid passage

Claim 1 of the ’057 Patent requires “a passageway connecting the central first fluid
passage to at least one of the substantially helically convoluted first fluid passages.” The parties
agree that the essential function of the passageway is to allow fluid to travel between the central
first fluid passage and at least one of the substantially helically convoluted first fluid passages.
Defendant’s definition merely incorporates many of the claim limitations into the definition of
passageway. Further, Plaintiff’s proposal of construing the term as meaning “a passage by which
fluid can travel” adds nothing that is not already present in the plain and ordinary meaning of the
term. See, e.g., U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997)
(“Claim construction is a matter of resolution of disputed meanings and technical scope, to
clarify and when necessary to explain what the patentee covered by the claims, for use in the
determination of infringement. It is not an obligatory exercise in redundancy.”); O2 Micro Int’l
Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008) (“[D]istrict courts are
not (and should not be) required to construe every limitation present in a patent’s asserted
claims.”). The Court hereby construes “passageway” as having its plain and ordinary meaning.

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D.

“outer second fluid passage” (’057 Patent, Claims 11, 13, 24, 28, 30, 32, and
39; ’504 Patent, Claims 10, 12, 28, and 30)

Plaintiff’s Proposed Construction
An outer passage for the second fluid

Defendant’s Proposed Construction
An elongated passage of the metal tubing heat
exchange element that is substantially surrounding at
least a portion of the substantially helically convoluted
first fluid passages [and/or at least a portion of the
substantially helically convoluted second fluid
passages], for passage of the second fluid

The term “outer second fluid passage” appears in claims 11, 13, 24, 28, 30, 32, and 39 of
the ’057 Patent, and claims 10, 12, 28, and 30 of the ’504 Patent. For example, claim 11 of the
’057 Patent depends from claim 1, and requires “the element of claim 1, further comprising an
outer second fluid passage, the outer second fluid passage substantially surrounding at least a
portion of the first fluid passages.”
The specification describes an embodiment whereby an additional outer passage for the
second fluid surrounds the other fluid passages.

In particular, the specification states that

“[e]lement 1 may further include an outer second fluid passage, the outer second fluid passage 9
substantially surrounding at least a portion of the first fluid passages and/or at least a portion of
the second fluid passages.” ‘057 Patent, 4:15-19.
Although Defendant slightly modified its construction in response to Plaintiff’s
arguments, most of the language in Defendant’s construction is found in the claims themselves.
To the extent it is not, the construction attempts to import limitations (e.g., elongated passage of
the metal tubing . . .) that are not properly found in the claims. On balance, after considering the
parties’ constructions, the Court concludes that the term “outer second fluid passage” is defined
as “an outer passage for the second fluid.” The balance of the language of the claims
sufficiently defines the orientation of the outer second fluid passage relative to the other claimed
passages.

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E.

“a single-piece construction” (’057 Patent, Claims 23, 27, 31, 35, and 38)

Plaintiff’s Proposed Construction
The heat exchanger is formed into a
single piece whether formed into one
piece or multiple pieces connected
together

Defendant’s Proposed Construction
The metal tubing heat exchange element is constructed
such that the central first fluid passage, the plurality of
substantially helically convoluted second fluid passages,
and the plurality of substantially helically convoluted
first fluid passages of the metal tubing heat exchange
element are all formed from one piece of material

The specification supports certain aspects of the Defendant’s construction. The relevant
claims are referring to the individual heat exchange elements, not the entire heat exchanger. It is
true, as Plaintiff argues, that the specification allows the connection of multiple elements
together to form the entire heat exchanger. It is also true that the specification allows for
individual elements to be constructed in a single piece or multiple pieces. This limitation,
however, is referring to the construction of individual elements. The relevant passage provides:
Preferably element 1 is a single-piece construction made from a
single piece of material such as metal (e.g. copper tubing). In this
context “single piece” refers to an embodiment wherein the central
passage 3, and the passages 5 and 7, are all formed from one piece
of material (versus alternate embodiments wherein passages 5 or 7
may be made separately and then connected to the central passage
3). It is contemplated that various single piece elements may be
joined end-to-end together in a heat exchanger. Even when joined
together as such, however, each element would still be a “single
piece” element within the scope of the definition given above.
’057 Patent, 4:3-14.
Read as a whole, the passage is discussing an embodiment wherein the individual
elements are each constructed out of separate pieces of tubing. A single piece of tubing is passed
through the various die to be tapered, corrugated, and compressed into the multi-passage heat
exchange element.

Although some of the Defendant’s limitations are not appropriate, on

balance, its construction is closer to correct than Plaintiff’s. Accordingly, the Court hereby
construes “single piece construction” to mean:

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The heat exchange element is constructed such that the central
first fluid passage, the plurality of substantially helically
convoluted second fluid passages, and the plurality of
substantially helically convoluted first fluid passages of the
heat exchange element are all formed from one piece of
material.
IV.

CONCLUSION
.

The Court adopts the constructions set forth in this opinion for the disputed terms of the

patents-in-suit. The parties are ordered that they may not refer, directly or indirectly, to each
other’s claim construction positions in the presence of the jury. Likewise, the parties are ordered
to refrain from mentioning any portion of this opinion, other than the actual definitions adopted
by the Court, in the presence of the jury. Any reference to claim construction proceedings is
limited to informing the jury of the definitions adopted by the Court.
SIGNED this 19th day of December, 2011.
So ORDERED and SIGNED this 23rd day of January, 2013.

____________________________________
RODNEY GILSTRAP
UNITED STATES DISTRICT JUDGE

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