Scott Environmental Services, Inc. v. A to Z Mud Co., Inc.
Filing
90
MEMORANDUM OPINION AND ORDER. Signed by Magistrate Judge Roy S. Payne on 8/26/2014. (ch, )
THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
SCOTT ENVIRONMENTAL SERVICES,
INC.,
Plaintiff,
v.
A TO Z MUD CO., INC.,
Defendant.
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CASE NO. 2:13-CV-701-JRG-RSP
MEMORANDUM OPINION AND ORDER
Before the Court is the opening claim construction brief of Plaintiff Scott Environmental
Services, Inc. (“Plaintiff”) (Dkt. No. 66, filed on May 27, 2014), the response of Defendant A to
Z Mud Co., Inc. (Dkt. No. 74, filed on June 11, 2014) (“Defendant”), and the reply of Plaintiff
(Dkt. No. 75, filed on June 17, 2014). The Court held a claim construction hearing on July 8,
2014. Having considered the arguments and evidence presented by the parties at the hearing and
in their claim construction briefing, the Court issues this Claim Construction Order.
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Table of Contents
I. BACKGROUND ....................................................................................................................... 3
II. LEGAL PRINCIPLES ........................................................................................................... 4
III. CONSTRUCTION OF DISPUTED TERMS ..................................................................... 8
A. “load bearing structure” ........................................................................................................ 8
B. “mixing said particulate mixture” ....................................................................................... 19
C. “forming said [cementitious/asphaltic] second mixture…”................................................ 23
D. “sufficient resistance to rutting that any rut formed in such surface by 10,000
applications of a single axle load of 18,000 pounds will have a depth of rutting that is
less than 1 inch” .................................................................................................................. 27
IV. CONCLUSION .................................................................................................................... 32
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I. BACKGROUND
Plaintiff alleges infringement of United States Patent No. 8,007,581 (“the ‘581 patent” or
“patent-in-suit”) in this lawsuit. The application leading to the ‘581 patent was filed on October
26, 2009, which is a continuation of an application filed on January 3, 2002 (now abandoned),
which was based on a provisional application filed on August 10, 2001. The ‘581 patent issued
on August 30, 2011, and is entitled “Incorporation of Drilling Cuttings into Stable Load-Bearing
Structures.” In general, the ‘581 patent is directed to incorporating drilling cuttings into loadbearing structures by mixing them with a stabilizer (referred to as group 2.1 suboperations) or
with a foamed or emulsified asphalt (referred to as group 2.2 suboperations) in particular ratios
such as to form a continuous structure with a specified compressive strength (defined in terms of
a rutting resistance). The Abstract of the ‘581 patent states:
Cuttings from drilling through or into natural rock and/or soil can be incorporated
into useful, high quality load-bearing structures such as vehicle roads and pads for
deep drilling rigs. This process recycles a material previously regarded as
valueless at best and often as a pollution hazard. The cuttings, optionally mixed
with drilling mud and/or soil, are converted to the useful structures by pozzolanic
and/or cementitious reactions after being mixed with suitable other materials
and/or are bonded into the useful structures by asphaltic materials.
Claim 1 of the ‘581 patent is shown below:
1. A process for constructing a load-bearing structure incorporating drilling
cuttings, said structure having a shape and a size and containing a continuous
portion having a cross-sectional area at least as large as the area of a circle having
a diameter of 101 millimeters, said process comprising operations of:
(1) forming a particulate mixture comprising drilling cuttings; and
(2) at least one of groups (2.1) and (2.2) of suboperations, said group (2.1)
comprising suboperations of:
(2.1.1) mixing said particulate mixture comprising drilling cuttings with at least
one stabilizer selected from the group consisting of:
(A) quicklime;
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(B) hydrated lime;
(C) Portland Cement;
(D) Class C fly ash;
(E) cement kiln dust;
(F) lime kiln dust;
(G) Class F fly ash; and
(H) other pozzolans to form a cementitious second mixture,
(2.1.2) forming said cementitious second mixture into the shape and size of the
load-bearing structure and developing structural strength within said shaped and
sized second mixture by pozzolanic reaction to form said load-bearing structure,
said load-bearing structure having sufficient resistance to rutting that any rut
formed in such surface by 10,000 applications of a single axle load of 18,000
pounds will have a depth of rutting that is less than 1 inch;
and said group (2.2) comprising suboperations of: (2.2.1) mixing said particulate
mixture comprising drilling cuttings with at least one of foamed asphalt and
emulsified asphalt to form an asphaltic second mixture; (2.2.2) forming said
asphaltic second mixture into the shape and size of the load- bearing structure;
and developing structural strength within the shaped and sized asphaltic second
mixture by curing, said load-bearing structure having sufficient resistance to
rutting that any rut formed in such surface by 10,000 applications of a single axle
load of 18,000 pounds will have a depth of rutting that is less than 1 inch.
II. LEGAL PRINCIPLES
“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.’” Phillips v. AWH Corp., 415
F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water
Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To determine the meaning of the
claims, courts start by considering the intrinsic evidence. See id. at 1313; C.R. Bard, Inc. v. U.S.
Surgical Corp., 388 F.3d 858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad
Commc’ns Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). The intrinsic evidence includes
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the claims themselves, the specification, and the prosecution history. See Phillips, 415 F.3d at
1314; C.R. Bard, Inc., 388 F.3d at 861. Courts give claim terms their ordinary and accustomed
meaning as understood by one of ordinary skill in the art at the time of the invention in the
context of the entire patent. Phillips, 415 F.3d at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n,
342 F.3d 1361, 1368 (Fed. Cir. 2003).
The claims themselves provide substantial guidance in determining the meaning of
particular claim terms. Phillips, 415 F.3d at 1314. First, a term’s context in the asserted claim
can be very instructive. Id. Other asserted or unasserted claims can also aid in determining the
claim’s meaning because claim terms are typically used consistently throughout the patent. Id.
Differences among the claim terms can also assist in understanding a term’s meaning. Id. For
example, when a dependent claim adds a limitation to an independent claim, it is presumed that
the independent claim does not include the limitation. Id. at 1314–15.
“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id.
(quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)).
“[T]he 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.’” Id. (quoting Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex, Inc. v. Ficosa N. Am.
Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). This is true because a patentee may define his own
terms, give a claim term a different meaning than the term would otherwise possess, or disclaim
or disavow the claim scope. Phillips, 415 F.3d at 1316. In these situations, the inventor’s
lexicography governs. Id. The specification may also resolve ambiguous claim terms “where
the ordinary and accustomed meaning of the words used in the claims lack sufficient clarity to
permit the scope of the claim to be ascertained from the words alone.” Teleflex, Inc., 299 F.3d at
5
1325. But, “‘[a]lthough the specification may aid the court in interpreting the meaning of
disputed claim language, particular embodiments and examples appearing in the specification
will not generally be read into the claims.’” Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d
1182, 1187 (Fed. Cir. 1998) (quoting Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560,
1571 (Fed. Cir. 1988)); see also Phillips, 415 F.3d at 1323. The prosecution history is another
tool to supply the proper context for claim construction because a patent applicant may also
define a term in prosecuting the patent. Home Diagnostics, Inc., v. Lifescan, Inc., 381 F.3d 1352,
1356 (Fed. Cir. 2004) (“As in the case of the specification, a patent applicant may define a term
in prosecuting a patent.”).
Although extrinsic evidence can be useful, it is “‘less significant than the intrinsic record
in determining the legally operative meaning of claim language.’” Phillips, 415 F.3d at 1317
(quoting C.R. Bard, Inc., 388 F.3d at 862). Technical dictionaries and treatises may help a court
understand the underlying technology and the manner in which one skilled in the art might use
claim terms, but technical dictionaries and treatises may provide definitions that are too broad or
may not be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert
testimony may aid a court in understanding the underlying technology and determining the
particular meaning of a term in the pertinent field, but an expert’s conclusory, unsupported
assertions as to a term’s definition are entirely unhelpful to a court. Id. Generally, extrinsic
evidence is “less reliable than the patent and its prosecution history in determining how to read
claim terms.” Id.
The “determination of claim indefiniteness is a legal conclusion that is drawn from the
court's performance of its duty as the construer of patent claims.” Exxon Research & Eng'g
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Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). Section 112 entails a “delicate
balance” between precision and uncertainty:
On the one hand, the definiteness requirement must take into account the inherent
limitations of language. Some modicum of uncertainty, the Court has recognized,
is the price of ensuring the appropriate incentives for innovation. … At the same
time, a patent must be precise enough to afford clear notice of what is claimed,
thereby apprising the public of what is still open to them. Otherwise there would
be a zone of uncertainty which enterprise and experimentation may enter only at
the risk of infringement claims. And absent a meaningful definiteness check, we
are told, patent applicants face powerful incentives to inject ambiguity into their
claims. … Eliminating that temptation is in order, and the patent drafter is in the
best position to resolve the ambiguity in patent claims.
Nautilus Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2128-29 (2014) (citations omitted).
Therefore, in order for a patent to be definite under § 112, ¶2, “a patent's claims, viewed in light
of the specification and prosecution history, [are required to] inform those skilled in the art about
the scope of the invention with reasonable certainty.” Id. at 2129.
The determination of
“definiteness is measured from the viewpoint of a person skilled in the art at the time the patent
was filed.” Id. at 2128. (emphasis original, citations omitted). “The definiteness requirement . . .
mandates clarity, while recognizing that absolute precision is unattainable.” Id. This standard
reflects rulings that have found that “the certainty which the law requires in patents is not greater
than is reasonable, having regard to their subject-matter.” Id. at 2129. “Whether a claim
reasonably apprises those skilled in the art of its scope is a question of law that [is] review[ed] de
novo.” Microprocessor Enhancement Corp. v. Texas Instruments Inc., 520 F.3d 1367, 1374
(Fed. Cir. 2008). As it is a challenge to the validity of a patent, the failure of any claim in suit to
comply with § 112 must be shown by clear and convincing evidence. Nautilus, 134 S. Ct. at
n.10.
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III. CONSTRUCTION OF DISPUTED TERMS
The parties’ positions and the Court’s analysis as to the disputed terms are presented
below.
A. “load bearing structure”
Plaintiff’s
Proposed Construction
“civil engineering structure that supports
a load of wheels passing over it”
Defendant’s
Proposed Construction
“civil engineering structure that is formed in place
as a permanent structure”
The disputed term “load bearing structure” appears in claim 1 of the ‘581 patent.
(1) The Parties’ Positions
Plaintiff submits that the “load bearing structure” is a civil engineering structure. (See,
e.g., Dkt. No. 66 at 7-8.) Plaintiff argues that the specification refers to roads and drilling pads
(structures over which wheels pass), and the claim expressly mentions the rutting resistance
property of the load bearing structure. (Id. at 8.) Thus, Plaintiff argues that the entire wording of
claim 1 itself, by referring to the rutting resistance of the structure, supports Plaintiff’s
interpretation that the load-bearing structure supports a load of wheels passing over it. (Id.)
Plaintiff argues that the claimed second mixture (whether stabilizer or asphalt) is formed and
shaped while still plastic (not fully hardened) into the desired load-bearing structure, but that the
step need not occur in the place where the structure is to be used. (Id. at 8.) Plaintiff argues that
Defendant’s use of “permanent” is vague and not supported in the claims or specification. (Id. at
8-9.) Plaintiff argues that the Applicant’s comments during prosecution of the patent do not
support Defendant’s construction and were not directed to whether the prior art reference was
“formed in place as a permanent structure.” (Id. at 9-11.)
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Defendant responds that its construction for “load bearing structure” is taken directly
from the prosecution history of the patent. (Dkt. No. 74 at 15-18.) Defendant argues that its
construction properly limits the claim scope argued to the USPTO during prosecution, i.e., that
the claims only cover a site mixing process. (Id. at 16.) Defendant argues that Plaintiff’s
proposed construction attempts to recapture the plant mixing subject matter disavowed during
prosecution.
(Id.)
Defendant argues that the subjective intent of a named inventor in a
declaration is not relevant to claim construction and provides only his personal opinion and not
one of ordinary skill in the art. (Id. at 16-17.) Defendant argues that Plaintiff’s hypothetical
example in the briefing of transporting a load-bearing structure from one site to the final
installation site is not found in the specification and is contrary to arguments found in the
prosecution history. (Id. at 17-18.)
Plaintiff replies that Defendant’s focus on “site mix” versus “plant mix” is irrelevant for
at least two reasons: 1) such a distinction not made during prosecution and 2) those terms never
appear in the intrinsic record. (Dkt. No. 75 at 6.) Plaintiff argues that Defendant’s proposed
limitation attempts to read in an improper limitation, while Plaintiff’s construction simply
provides meaning to the terms “load bearing” and “structure.” (Id.)
(2) Analysis
As an initial matter, both parties agree that the “load-bearing structure” is a “civil
engineering structure.” The parties’ dispute is whether the “civil engineering structure” is a
structure that merely “supports a load of wheels passing over it” (proposed by Plaintiff) or
whether it is “formed in place as a permanent structure” (proposed by Defendant). In particular,
the parties dispute the significance of the prosecution history and whether or not the prosecution
history disclaimed a mixing (and forming) process other than at the final installation site of the
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structure. The claims, prosecution history, and specification are relevant to the parties’ dispute
as to this term.
Claim 1 provides, in relevant part, “[a] process for constructing a load-bearing structure
incorporating drilling cuttings, said structure having a shape and a size and containing a
continuous portion having a cross-sectional area at least as large as the area of a circle having a
diameter of 101 millimeters, said process comprising operations of…”
The claim further
comprises the steps of forming a particulate mixture comprising drilling cuttings, mixing said
particulate
mixture
with
either
a
stabilizer
or
asphalt,
and
forming
a
second
cementitious/asphaltic mixture into the shape and size of the load bearing structure and
developing structural strength within the shaped and sized second mixture. At no point does the
claim require the load bearing structure to be a “permanent structure” as proposed by Defendant.
Further, while the second mixture must be formed into the shape and size of the load bearing
structure, there is no express requirement in the claim that the structure be “formed in place.”
The specification likewise has no express requirement that the load bearing structure is a
“permanent structure” or that the structure be “formed in place.” The Court notes that Defendant
admitted during the claim construction hearing that its proposed construction was based on the
prosecution history and not necessarily the specification or claims.
The prosecution history is relevant for this disputed term.
The Applicant filed a
provisional application on August 10, 2001, and then filed U.S. application no. 10/037,630 (“the
‘630 application”) on January 3, 2002, claiming priority to the provisional application. In
response to various office actions rejecting the pending claims in that application, the Applicant
made various arguments and claim amendments, eventually culminating in a decision by the
Board of Patent Appeals and Interference (“BPAI”) on August 28, 2009, affirming the
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Examiner’s rejections and finding the claims invalid over U.S. Patent No. 6,706,108 (“Polston”).
(See, e.g., Prosecution History for the ‘630 patent application, Dkt. No. 76-3.) On October 26,
2009, the Applicant filed a continuation application (12/605,617) claiming priority to the earlier
application and provisional application, and this application eventually issued into the ‘581
patent.
In the application leading to the ‘581 patent, the Applicant made preliminary
amendments to the claims, specifying that the claimed process was directed to “constructing a
load-bearing structure incorporating drilling cuttings, said structure having a shape and a size and
containing a continuous portion having a cross-sectional area at least as large as the area of a
circle having a diameter of 101 millimeters, said process comprising operations of: …” (See
April 22, 2010 Preliminary Amendment). In the remarks section of the preliminary amendments,
the Applicant provided the following discussion:
“[A] location, a shape, and a size” in line 2 are inherent properties of a civil
engineering structure;
The words “containing a continuous portion having a cross-sectional area at least
as large as the area of a circle having a diameter of 101 millimeters” are an
inherent property of the disclosure, in paragraph [0058] on page 34 of the
specification, that one of the samples made was tested according to ASTM D 698.
On a page numbered “84” at its bottom, near the top of the right column on the
page, the official description of this ASTM test has a requirement that a test
specimen for this test be molded and be at least 4 inches, or 101.6. +/- 0.4 mm, in
diameter. A molded object is inherently continuous, and since the mold specified
is a cylinder, any cross-section of it perpendicular to its axis will have the
geometric properties stated in the language of the new claim; also, a road layer
0.15 meters in depth and from 11 to 14 meters in width was prepared from 573
cubic meters of mud/cuttings (see paragraphs [0074] to the end of the
specification.) Calculation shows that this road was over 279 meters long. After
mixing with some soil, the mixed layer was compacted by a sheep’s foot roller
that exerted a pressure of at least 200 psi; this is more than twice as much as the
pressure prescribed for the above-noted ASTM test, so that after curing the road
will also be continuous, and its cross-section parallel to the ground over which it
is built will be 279 meters by at least 11 meters, far above the minimum area
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specified by the new claim; the road as built is a civil engineering structure with a
location, a shape, and a size; therefore, the applicants clearly possessed the
geometric characteristics of the invention as claimed at the time the application
was filed;
(Id. at 11-12.)
In response to the Examiner’s subsequent office action rejecting the claims, the Applicant
made various arguments over the Polston reference. (See, e.g., Response and Amendments dated
October 5, 2010.) In particular, the Applicant made the following arguments over the cited
Polston reference:
Applicants respectfully traverse the above rejection for the following
reasons. First of all, the instantly pending claims are different from the claims in
the parent application that were finally rejected by the Examiner and by the Board
of Patent Appeals and Interferences. The terms “said structure having a shape
and a size and containing a continuous portion having a cross-sectional area at
least as large as the area of a circle having a diameter of 101 millimeters” in the
claims now pending render the invention claimed by these claims different from
the invention claimed in the parent application. [] In addition, Polston neither
teaches nor suggests anything about rutting resistance, another term in the
instantly pending claims. The invention as claimed in the instantly pending claims
is defined, inter alia, by the combination of the terms which recite that the
finished load-bearing structure has sufficient resistance to rutting that any rut
formed in such surface by 10,000 applications of a single axle load of 18,000
pounds will have a depth of rutting that is less than 1 inch and that has a shape
and a size and containing a continuous portion having a cross-sectional area at
least as large as the area of a circle having a diameter of 101 millimeters. Polston
contains no teaching or suggestion as to load-bearing structures having this
combination of properties. Thus, the invention as a whole as instantly claimed
could not be obvious over Polston. ...
Furthermore, the geometrical limitations that a continuous portion of the
load-bearing structure formed by the instantly claimed process has a crosssectional area at least as large as the area of a circle having a diameter of 101
millimeters cannot be inherent properties of the composition used because the
compositions taught both by Polston and by the specification here, in their
processing before final hardening, can in principle be shaped into almost any
desired geometrical form.
Applicants further submit that Polston neither teaches nor suggests an
advantage realized from the geometrical form required by the italicized portion of
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pending claim 3 above as printed above. In fact, so far as the applicant has been
able to determine, Polston has no explicit teaching whatever about an optimum or
even suitable size for the road material that its process forms. By implication,
however, Polston teaches away from the minimum continuous size now claimed:
At column 7 lines 58-65, Polston teaches that the aggregate material for its
product preferably is “less than about 1 ½ inch in size” (line 63) and again at
column 9 lines 3-5 “optimally sized to ¾ inch to 1 ½ inch diameter pieces but
may include a substantial portion smaller than ¾”. Note that there is no mention,
even as an option, of larger pieces.
The minimum dimension of continuity required by the pending claims is
101 mm, slightly less than 4 inches in size but, much more than “about 1 ½
inches.”
(Id. at 11-12) (emphasis original.) The Applicant also submitted declarations regarding the
testing of materials made according to the Polston reference, the testing of materials made
according to the claimed invention, and the related compressive strengths of such different
materials. (Id. at 12-14.)
Again, in response to the Examiner’s subsequent office action rejecting the claims, the
Applicant made various arguments over the prior art reference Polston. (See, e.g., Response and
Amendments dated February 15, 2011.)
In particular, the Applicant made the following
arguments over the cited Polston reference:
The Examiner also continued to hold the position that the process as is
now claimed would appear essentially no different than that relating to
10/037,630 wherein the same material or components are mixed to form a load
bearing structure and any properties resulting from that would have been expected
to be the same. Applicants submit that the road base material disclosed and
claimed in Polston is different from the claimed load bearing structure in the
instantly pending claims. Polston’s road base material is a particulate substance
whereas the instantly claimed load bearing structure is or at least includes a
continuum of substantial size. The contention that Polston’s road base material is
a particulate substance is supported by at least the following pertinent portions of
the teachings of Polston. …
These disclosures make it very clear that the substance made by the
Polston process is comprised of particles formed in a mixer of some type (e.g., a
pug mill) and are capable of being worked such as being deposited on a road base
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location after mixing. These and other similar disclosures in Polston force the
common sense conclusion that the material made by the Polston process is not
and cannot be a continuum because a continuous material could not be removed
from a mixer and applied and worked into a road base after having been formed in
the mixer. In other words, Polston’s final product cannot be a load bearing
continuous substance as instantly claimed.
Applicants further submit that the Walka declaration supports Applicants’
contention that the road base material disclosed and claimed in Polston is different
from the claimed load bearing structure in the instantly pending claims. In that
declaration, Mr. Walka describes the testing of a continuous material made by the
instantly claimed process. This continuous material had an unconfined
compressive strength and associated rutting resistance that were very different
from a material made by the process taught by Polston. The Polston material was
made by crushing the continuous material from the test molds (made by the
instantly claimed process) and the crushed mixture thus formed was graded by
conventional means to form a graded aggregate that would pass a 1 ½ inch
opening sieve but was retained on a ¾ inch opening sieve as described in column
9, lines 3-5 of Polston. Mr. Walka further states that the graded aggregate was
immediately molded into a cylindrical shape 4.5 inches in diameter and 6 inches
high. The resulting molded cylindrical material was removed from the mold and
allowed to stand in the laboratory for nine days. During that nine day period, it
was observed that one corner of the molded cylinder had begun to spontaneously
crumble, and that by the ninth day an estimated minimum of 1/5 of the total
volume of the molded cylinder had crumbled into fragments next to the molded
cylinder on the laboratory bench. The remaining intact portion of the molded
cylinder had an unconfined compressive strength no greater than 28 psi. The
Walka declaration shows that material made from exactly the same materials and
in the same proportions as the Polston process exhibited different load-bearing
properties. The difference between the materials is that the one made according to
the instantly claimed process is a continuous material and the other one, which is
a particulate material, is made from the materials and in the size taught by
Polston.
…
Applicants submit that, first of all, the Examiner has misstated the claims
under consideration, which do not anywhere directly prescribe any specific size
and shape for their load bearing structure. What the newly added claim limitation
does prescribe is the existence within the load bearing structure of a portion with a
minimum size. This specified minimum size condition was not met by the test
structure made by Mr. Walka that had no more than 28 psi of unconfined
compressive strength, even though it was made from the same material as the test
structure also made by Mr. Walka that had an unconfined compressive strength of
14
120 psi and that did meet the newly added limitation. This is a strong indication of
actual difference.
(Id. at 12-15.)
In response to yet another office action by the Examiner rejecting the claims, the
Applicant filed an Appeal Brief repeating many of its previously recited arguments over the prior
art reference Polston. (See, e.g., Appeal Brief dated April 26, 2011.) In particular, the Applicant
made the following arguments over the cited Polston reference in which it detailed four primary
differences between the claimed invention and Polston:
The first major difference is that the Polston reference teaches making a
different product from that made by the process covered by the claims on appeal.
More specifically, Polston’s road base material is a particulate material whereas
the instantly claimed load bearing structure is or at least includes a continuum of
substantial size. The contention that Polston’s road base material is a particulate
substance is supported by at least the following pertinent portions of the teachings
of Polston: []
A load bearing structure produced as the result of the process claimed
in the appealed claims is not “typically ... stored”; it is constructed or erected
over the area of its intended use. In other words, the structure is a high-loadbearing civil engineering structure such as a vehicle road or a drilling pad
and the like that is formed in place as a permanent structure. []
These disclosures make it very clear that the substance made by the
Polston process is comprised of particles formed in a mixer of some type (e.g., a
pug mill) and capable of being worked, such as by being deposited on a road base
location after mixing. These and other similar disclosures in Polston force the
common sense conclusion that the road base material made by the Polston process
is not and cannot be a continuum because a continuous material could not be
removed from a mixer and applied and worked into a road base after having been
formed in the mixer and cured in particulate form. Only after application of this
particulate material to a road base location can this material become a load
bearing structure within the meaning of the claims on appeal. However, no
ordinary “application” technique can cause a load bearing structure formed in this
way to be continuous, or to contain continuous portions of larger size than those
of the particulate road base material that was cured in particulate form. Polston
does not teach or suggest any special technique that could increase the continuity
of any load bearing structure formed from Polston’s particulate product by
application to a road base location.
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The second major difference is that there is no teaching or suggestion in
Polston corresponding to the following claim limitation on appeal: “containing a
continuous portion having a cross-sectional area at least as large as the area of a
circle having a diameter of 101 millimeters”. This limitation became the basis of a
decision by Mr. Gary Jones, TC 1700 Director, to grant Applicants’ petition to
find that the finality of the first action of 07/06/2010 was premature. Applicants
filed the petition because the Examiner made the first office action final based on
the contention that that the invention claimed in pending claims 3-22 is the same
as that claimed in the claims of the parent application and that claims 3-22 could
have been rejected over Polston if they had been presented in the parent
application. In granting the petition, Mr. Jones agreed with Applicants’ position
that examination of the claims of the parent application and those in the instantly
pending application plainly shows that the words “said structure having a shape
and a size and containing a continuous portion having a cross-sectional area at
least as large as the area of a circle having a diameter of 101 millimeters” in the
claim now pending have no counterpart whatsoever in the claim from the earlier
invention. On this basis, Mr. Jones granted the petition to withdraw the finality of
the first office action. The Examiner disagreed with Mr. Jones and maintained the
position that the invention claimed in the claims on appeal and those in the parent
application are for the same invention.
The third major difference is that Polston teaches nothing corresponding
to the following excerpt from claim 3 on appeal: “forming said cementitious
second mixture into the shape and size of the load-bearing structure and
developing structural strength within said shaped and sized second mixture by
pozzolanic reaction to form said load-bearing structure”. As already noted in the
above argument for the first major difference, pozzolanic reaction, also called
“curing”, in a process as taught by Polston occurs while the product material is
still in particulate form. This particulate form is not the shape and size of the
completed load bearing structure, which is only achieved after an additional
operation of applying the particulate product to a road base location. Since the
curing has been completed and the cured product has been stored before this time,
there is no reason to expect further curing after the product has been applied “to a
road base location”.
The fourth major difference involves Polston’s failure to teach anything
corresponding to the following excerpt from claim 3 on appeal: “said load-bearing
structure having sufficient resistance to rutting that any rut formed in such surface
by 10,000 applications of a single axle load of 18,000 pounds will have a depth of
rutting that is less than 1 inch”. The Examiner has conceded from the start that
there is no explicit teaching to this effect in the Polston reference. The Examiner’s
contention that such a teaching is implicit because “the same materials are used
and mixed in the same proportions” will be rebutted below.
16
(Id. at 10-13)(bolded emphasis added.) The Examiner eventually agreed with the Applicant’s
arguments and issued a Notice of Allowance, in which it provided the following comments:
The prior art Polston reference used in examiner’s rejection was
withdrawn because applicants declarations under 37 CFR 1.132 showed
unexpected results with respect to properties such as compressive strength.
Applicants claimed there compressive strength was as high or greater than 100 psi
vs prior art Polston which was only as high as 28 psi.
(See July 14, 2011 Notice of Allowance.)
During the claim construction hearing, the Court asked Defendant to identify the clear
and unambiguous prosecution disclaimer it sought to read into the claim term. Defendant
conceded that there was no “billboard” in the prosecution history that supports a prosecution
disclaimer, but that rather the disclaimer was based on the “consistency” and “length” of the
Applicant’s repeated characterizations of its invention and the prior art at different times and in
different ways. When asked what the best example for prosecution disclaimer, the Defendant
relied on the following phrase, which was the found in Applicant’s second argument of its
Appeal Brief:
A load bearing structure produced as the result of the process claimed in
the appealed claims is not “typically ... stored”; it is constructed or erected over
the area of its intended use. In other words, the structure is a high-load-bearing
civil engineering structure such as a vehicle road or a drilling pad and the like
that is formed in place as a permanent structure.
(See, e.g., Appeal Brief dated April 26, 2011, at 11)(emphasis added.) Contrary to Defendant’s
assertion, the Court finds that this statement is not an express definition of or disavowal to the
“load bearing structure” term, but rather is merely an illustration. Further, at a minimum, there is
ambiguity as to whether the “formed in place as a permanent structure” phrase in this
prosecution statement modifies the load bearing structure term or is merely a further exemplar of
17
a vehicle road or drilling pad.
During the claim construction hearing the Defendant
acknowledged this ambiguity.
Based on the prosecution history as a whole, the Court rejects the Defendant’s argument
that there was a disclaimer in the prosecution history – particularly any “clear” and
“unambiguous” disclaimer – that the load bearing structure must be entirely site mixed as
opposed to plant mixed. See, e.g., Grober v. Mako Prods., Inc., 686 F.3d 1335, 1342 (Fed. Cir.
2012) (“However, while the prosecution history can inform whether the inventor limited the
claim scope in the course of prosecution, it often produces ambiguities created by ongoing
negotiations between the inventor and the PTO.
Therefore, the doctrine of prosecution
disclaimer only applies to unambiguous disavowals.”) (citations omitted); see also SanDisk
Corp. v. Memorex Prods., Inc., 415 F.3d 1278, 1286-87 (Fed. Cir. 2005) (“When the patentee
makes clear and unmistakable prosecution arguments limiting the meaning of a claim term in
order to overcome a rejection, the courts limit the relevant claim term to exclude the disclaimed
matter. … An ambiguous disclaimer, however, does not advance the patent’s notice function or
justify public reliance, and the court will not use it to limit a claim term’s ordinary meaning.”)
The Court therefore disagrees with the Defendant that the Applicant surrendered any
plant mix processes or that its claims only were allowed because they were limited to a site mix
method or that they were allowed based on any geographical location. Rather, there is ample
support in the prosecution history for Plaintiff’s arguments that the claims were allowed because
the Polston reference did not provide a continuous material with the required compressive
strength. This is confirmed by the Examiner’s statements in the Notice of Allowance (above),
and is in alignment with the express claim language in claim 1. Thus, the Court rejects
Defendant’s proposed construction. Still further, when a prosecution argument is subject to
18
more than one reasonable interpretation, it cannot rise to the level of a clear and unmistakable
disclaimer. See, e.g., SanDisk Corp., 415 F.3d at 1287 (“There is no ‘clear and unmistakable’
disclaimer if a prosecution argument is subject to more than one reasonable interpretation, one of
which is consistent with a proffered meaning of the disputed term.”) (internal quotation marks
omitted); see also 01 Communique Laboratory, Inc. v. LogMeIn, Inc., 687 F.3d 1292, 1297 (Fed.
Cir. 2012) (quoting SanDisk).
Both parties, however, agree that a construction is needed for this term and both agree
that a “load bearing structure” is a civil engineering structure that supports a load. Consistent
with the intrinsic record, the Court finds that the exemplary language of “vehicle road” and
“drilling pad” is helpful to the jury, but consistent with the rationale above the Court rejects any
requirement that it is “formed in place” or is “permanent.”
The Court hereby construes “load bearing structure” to mean a “civil engineering
structure that supports a load, such as a vehicle road or drilling pad”.
B. “mixing said particulate mixture”
Plaintiff’s
Proposed Construction
Plain meaning
Defendant’s
Proposed Construction
“mixing in the place of the load-bearing structure
said particulate mixture”
The disputed term “mixing said particulate matter” appears in claim 1 of the ‘581 patent.
(1) The Parties’ Positions
Plaintiff submits that the term does not require construction and should be afforded its
plain and ordinary meaning. (See, e.g., Dkt. No. 66 at 14-16.) Plaintiff argues that the term is
simple and straightforward. (Id. at 14-15.) Plaintiff argues that an important aspect of the
invention described in the patent is that the “second mixture” is formed into the size and shape of
19
the load-bearing structure while still being in a formable state, which can be accomplished
independently of any requirement that the mixing occur “in the place of the load-bearing
structure.”
(Id. at 15.) Plaintiff provides examples where the claimed process could take
advantage of the claimed invention at a place separate from the place of forming the final loadbearing structure.
(Id. at 15-16.)
Plaintiff argues that there is nothing in the claims,
specification, or prosecution history that warrants Defendant’s proposed construction. (Id. at
16.)
Plaintiff argues that the Applicant did not limit its invention to mixing the claimed
particulate mixture “in the place of the load-bearing structure.” (Id.)
Defendant responds that its construction for “mixing said particulate mixture” naturally
flows directly from the prosecution history of the patent and the Applicant’s disavowal of plant
mixing methods. (Dkt. No. 74 at 18-21.) Defendant argues that its construction properly limits
the claim scope argued to the USPTO during prosecution, i.e., that the claims only cover a site
mixing process.
(Id.)
Defendant argues that Plaintiff’s proposed construction attempts to
recapture the plant mixing subject matter disavowed during prosecution. (Id.) Defendant argues
that the subjective intent of a named inventor in a declaration is not relevant to claim
construction and provides only his personal opinion and not one of ordinary skill in the art. (Id.)
Defendant argues that Plaintiff’s hypothetical example in the briefing of transporting a loadbearing structure from one site to the final installation site is not found in the specification and is
contrary to arguments found in the prosecution history. (Id.) Defendant argues that one of
ordinary skill in the art would understand the mixing step in the claimed process to be limited to
mixing in the place of the load-bearing structure. (Id. at 19.)
Plaintiff replies that Defendant’s focus on “site mix” versus “plant mix” is irrelevant, as
that is a distinction not made during prosecution and those terms never appear in the intrinsic
20
record. (Dkt. No. 75 at 6.) Plaintiff argues that Defendant improperly equates mixing in the
same place as forming and curing and Defendant’s reliance on the prosecution history for these
two difference concepts is misplaced.
(Id.)
In other words, Plaintiff argues that forming
(shaping) and curing in place does not mean the mixture must also be created in the same place.
(Id.) Plaintiff argues that Defendant’s insertion of “in the place of the load bearing structure” is
not necessary and should be rejected. (Id. at 7.)
(2) Analysis
The parties’ arguments as to the “mixing said particulate mixture” term are similar to
their arguments made with respect to the “load bearing structure” term. In particular, Defendant
relies on a prosecution history disclaimer argument. For the same reasons as described in
connection with the “load bearing structure” term, the Court finds that the prosecution history as
a whole does not support Defendant’s arguments. In particular, the Court rejects Defendant’s
argument that the Applicant disclaimed any mixing other than at the final site of the load bearing
structure. The Court finds that there is no “clear” and “unambiguous” disclaimer to this affect in
the prosecution history. Rather, like the “load bearing structure” term, there is ample support in
the prosecution history for Plaintiff’s arguments that the claims were allowed because the prior art
Polston reference did not provide a continuous material with the required compressive strength.
In relevant part, claim 1 simply recites “forming a particulate mixture” and “mixing said
particulate mixture” with a stabilizer or asphalt and then “forming said [] second mixture into the
shape and size of the load-bearing structure.” The claim treats the “mixing” step separately from
the “forming” step. While the claim provides that the forming a second mixture step be in the
shape and size of the load-bearing structure, there is no similar requirement for the “mixing”
step. Further, there is no express limitation in the claims that requires the “mixing” step to take
21
place at the final site of the load bearing structure. In other words, requiring the load-bearing
structure to be formed in the shape and size of the structure (or even formed in place) does not
dictate the location where the separately claimed “mixing” step should be performed. Likewise,
the fact that the specification discusses a “pre-stabilization agent” that can be added to the
mixture, followed by a stabilizer to complete the pozzolanic reaction, supports Plaintiff’s
argument that mixing can be performed off site. See, e.g., ‘581 patent, col. 14, l. 52 – col. 15, l.
57. Further, the fact that various dependent claims (such as claims 6 and 11) expressly state that
the mixing step can be accomplished in two stages further supports Plaintiff’s argument that the
mixing can be performed at a site other than the final site of the load-bearing structure. Still
further, generally terms are presumed to possess their ordinary meaning, although this can be
overcome by statements of clear disclaimer.
See SciMed Life Sys., Inc. v. Advanced
Cardiovascular Sys., Inc., 242 F.3d 1337, 1343-44 (Fed. Cir. 2001). Thus, the Court rejects
Defendant’s argument that the mixing and forming steps have to be in the same place, much less
at the place where the load bearing structure is intended to be used.
The Court finds that the “mixing said particulate mixture” term has no special meaning
other than its plain meaning. The Court rejects Defendant’s arguments to the contrary. Because
this resolves the dispute between the parties, the Court finds that the term requires no further
construction. See 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.”); see also O2
Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008)
22
(“[D]istrict courts are not (and should not be) required to construe every limitation present in a
patent’s asserted claims.”) (citing U.S. Surgical, 103 F.3d at 1568).
The Court hereby construes “mixing said particulate matter” to have its plain meaning.
C. “forming said [cementitious/asphaltic] second mixture…”
Term
“forming said cementitious
second mixture into the shape
and size of the load-bearing
structure and developing
structural strength within said
shaped and sized second
mixture by pozzolanic
reaction”
“forming said asphaltic second
mixture into the shape and size
of the load-bearing structure;
and developing structural
strength within the shaped and
sized asphaltic second mixture
by curing”
Plaintiff’s
Defendant’s
Proposed Construction
Proposed Construction
Plain meaning
“mechanically forming said
cementitious second mixture into
the shape and size of the loadbearing structure and developing
structural strength within said
shaped and sized second mixture
by pozzolanic reaction”
Plain meaning
“mechanically forming said
asphaltic second mixture into the
shape and size of the load- bearing
structure; and developing
structural strength within the
shaped and sized asphaltic second
mixture by curing”
The disputed terms “forming said cementitious second mixture into the shape and size of
the load-bearing structure and developing structural strength within said shaped and sized second
mixture by pozzolanic reaction” and “forming said asphaltic second mixture into the shape and
size of the load-bearing structure; and developing structural strength within the shaped and sized
asphaltic second mixture by curing” appear in claim 1 of the ‘581 patent.
(1) The Parties’ Positions
Plaintiff submits that the “forming said cementitious second mixture…” and “forming
said asphaltic second mixture…” terms do not require construction. (See, e.g., Dkt. No. 66 at 1113.) Plaintiff argues that these terms are clear on their face, as confirmed by the fact that
Defendant is not attempting to construe any of the words but is instead attempting to insert the
23
word “mechanical.” (Id.) Plaintiff argues that it is unclear what Defendant means as to the
mechanical term. (Id.) Plaintiff argues that, depending on the size and area of the load-bearing
structure, the second mixture can be formed into the desired size and shape by any means, with
or without the aid of machines, and without a requirement for any particular type of machine. (Id.)
Defendant argues that the “mechanical” formation of the load-bearing structure is a
necessary part of the site mixing process that the Applicant limited its claim to through
disavowal of claim scope. (See, e.g., Dkt. No. 74 at 22.) The Defendant also argues that the
qualifier “mechanical” is needed to clarify what is meant by the word “forming” in light of the
various different uses of that term in claim 1. (Id.) Defendant argues that, consistent with the
specification and prosecution history, a person of ordinary skill in the art would understand the
“forming” step in a road mix operation to comprise processes such as grading, compacting, and
rolling. (Id.) Defendant argues that claim 1 uses the term “forming” in two distinct ways: (i)
combining materials for “forming a particulate mixture” and “to form a . . . second mixture”; and
(ii) “forming said . . . second mixture into the size and shape of a load bearing structure.” (Id. at
23.) These two uses correspond to two distinct definitions of the word “form”: (i) “to serve to
make up or constitute” and (ii) “to give a particular shape to.” (Id.) Defendant argues that
because the single word “forming” is used in two distinct ways in the claim, the construction of
the claim should acknowledge and distinguish these two uses in the claim construction to provide
clarity to the parties and the jury. (Id.)
Plaintiff replies that Defendant’s insertion of the “mechanical” limitation is unjustified
and confusing. (Dkt. No. 75 at 7.) Plaintiff argues that one reading the claims would understand
the different use of the terms “forming” and that “mechanically” does not serve to distinguish these
meanings. (Id.) Plaintiff further argues that Defendant’s reliance on the specification’s use of
24
heavy machinery is an improper limitation to a preferred embodiment. (Id.) Plaintiff argues
that, when the prosecution history is read in context, the distinguishing feature from the claimed
method to the prior art is different than that which Defendant asserts. (Id. at 8.)
(2) Analysis
The parties dispute whether the term “mechanical” should be included for the meaning of
these disputed terms. The specification does not use the term “mechanical.” Neither do the
claims. There is no express requirement in claim 1 that the “forming” step be formed by a
mechanical means. Further, neither the specification nor the prosecution history contains a
requirement that the “forming” step be by mechanical means. At best, Defendant points to an
embodiment in the specification using a “sheep’s foot roller” that applies a pressure of 200 to
300 psi as support that the forming step must be “mechanical.” See, e.g., ‘581 patent, col. 26, l.
59 – col. 27, l. 8.
The Court rejects Defendant’s argument that “mechanical” formation of the load-bearing
structure is a necessary part of the site mixing process. Likewise, the Court rejects Defendant’s
argument that the “mechanical” qualifier is needed to clarify what is meant by the word
“forming” or to avoid confusion between the different uses of the term “forming.” The Court
finds no support in the claims, specification, or prosecution history for the Defendant’s
constructions. While the specification provides an example of a machine (such as a sheep’s foot
roller) being used to perform some of the “forming” steps, it is merely that, an example. The
Court finds that the examples in the specification are non-limiting embodiments that should not
be imported into the claims. The Federal Circuit has consistently held that “particular
embodiments appearing in the written description will not be used to limit claim language that
has broader effect.” Innova/Pure Water, 381 F.3d at 1117. Even where a patent describes only a
25
single embodiment, absent a “clear intention to limit the claim scope,” it is improper to limit the
scope of otherwise broad claim language by resorting to a patent’s specification. Id. The Court
is not convinced that the broadly used “forming” should be limited to one of the disclosed
embodiments, particularly when there is no intent by the patentee to do such. See LiebelFlarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (citing numerous cases
rejecting the contention that the claims of the patent must be construed as being limited to the
single embodiment disclosed and stating that claims are to be given their broadest meaning
unless there is a clear disclaimer or disavowal); see also Comark Commc’ns, Inc. v. Harris
Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1988) (“Although the specification may aid the court in
interpreting the meaning of disputed claim language, particular embodiments and examples
appearing in the specification will not generally be read into the claims.”); see also Phillips, 415
F.3d at 1323. Further, generally terms are presumed to possess their ordinary meaning, although
this can be overcome by statements of clear disclaimer. See SciMed Life Sys., Inc. v. Advanced
Cardiovascular Sys., Inc., 242 F.3d 1337, 1343-44 (Fed. Cir. 2001). Still further, the Court notes
that during the claim construction hearing, Defendant withdrew its proposals/disputes as to these
terms in favor of their plain meaning.
The Court hereby construes “forming said cementitious second mixture into the
shape and size of the load-bearing structure and developing structural strength within said
shaped and sized second mixture by pozzolanic reaction” to have its plain meaning.
The Court hereby construes “forming said asphaltic second mixture into the shape
and size of the load- bearing structure; and developing structural strength within the
shaped and sized asphaltic second mixture by curing” to have its plain meaning.
26
D. “sufficient resistance to rutting that any rut formed in such surface by 10,000
applications of a single axle load of 18,000 pounds will have a depth of rutting
that is less than 1 inch”
Plaintiff’s
Proposed Construction
Plain meaning
Defendant’s
Proposed Construction
Indefinite
The disputed term “sufficient resistance to rutting that any rut formed in such surface by
10,000 applications of a single axle load of 18,000 pounds will have a depth of rutting that is less
than 1 inch” appears in claim 1 of the ‘581 patent.
(1) The Parties’ Positions
Plaintiff submits that the term does not require construction and should be afforded its
plain and ordinary meaning. (See, e.g., Dkt. No. 66 at 13-14.) Plaintiff argues that the patent
describes the strength properties of the load-bearing structures that are formed by the claimed
process primarily in terms of their resistance to rutting. (Id. at 13.) A person of ordinary skill in
the art would understand the plain meaning of the phrase to mean exactly what it states, as the
terms used in this phrase would be familiar to a person having ordinary skill in the art. (Id.)
Plaintiff argues that such a person would recognize that the use of 18,000 pound single loads to
assess traffic loads is common in the art, and relies upon a declaration by one of the named
inventors in support thereof. (Id.) Plaintiff argues that Defendant has not shown why the term is
“insolubly ambiguous.” (Id. at 14.)
Defendant argues that this term is indefinite. (Dkt. No. 74 at 25-30.) In particular,
Defendant argues that while one of ordinary skill in the art would understand (i) the concept of
assessing the effect of traffic loads on an engineered road surface using 18,000-pound equivalent
single-axle loads, and (ii) that one familiar technique to assess traffic loads is to convert damage
from wheel loads of various magnitudes and repetitions to damage from an equivalent number of
27
standard or equivalent loads, that one of ordinary skill in the art would not understand the
meaning of the claimed rutting requirement. (Id. at 25-26.) Defendant argues, supported by
expert declarations, that “[t]he entire concept of rutting resistance of a load-bearing structure of
the type described in the ’581 Patent is meaningless.” (Id. at 26.) Defendant argues that one of
ordinary skill in the art would not be able to apply (i) common loaded wheel tests, (ii) standard
industry models, or (iii) the specification of the ‘581 patent to determine if the rutting
requirement is met by a load-bearing structure built according to the claimed method. (Id.
at 26-28.)
Plaintiff replies that the term is not indefinite and should be afforded its plain meaning.
(Dkt. No. 75 at 8.) Plaintiff argues that Defendant’s arguments – that there are no known
techniques to determine the rutting resistance of pozzolanic structures – are wrong. (Id. at 9.)
Plaintiff argues that test methods were well known in the art that can provide information needed
to reliably estimate the rutting resistance of a pozzolanic structure. (Id.) Plaintiff also argues
that Defendant’s argument is misplaced because it confuses infringement with indefiniteness and
claim construction. (Id. at 10.)
(2) Analysis
Neither party appears to dispute that a person of ordinary skill in the art would
understand the rutting resistance disputed term:
There is no dispute that a person of ordinary skill in the art would understand, in
the abstract, the concept of assessing the effect of traffic loads on an engineered
road surface using 18,000-pound equivalent single-axle loads (“ESALS”). Little
Dec. at ¶25; Akeman Dec. at ¶31; Patton Dec. at ¶37. There is also no dispute
that a person of ordinary skill in the art would understand that one familiar
technique to assess traffic loads is to convert damage from wheel loads of various
magnitudes and repetitions to damage from an equivalent number of standard or
equivalent loads. Little Dec. at ¶25; Akeman Dec. at ¶31. However, even with
these understandings, a person of ordinary skill in the art would be unable to
28
ascertain the meaning of the Rutting Requirement as it would be applied to a loadbearing structure built in accordance with the ’581 Patent process. Akeman Dec.
at ¶21; Patton Dec. at ¶37.
(Defendant’s Responsive Claim Construction Brief, Dkt. No. 74 at 25-26.) Both of Defendant’s
experts do not dispute the meaning of the disputed phrase or the scope of the claims; rather, they
dispute whether the disputed phrase applies to the claimed load-bearing structure:
31. As Dr. Little states in paragraph 25 of his declaration, a “person of ordinary
skill in the art would recognize the use of 18,000 pound single axle loads to assess
traffic loads.” I agree with this statement. I also agree with Dr. Little’s statement
that “[o]ne familiar technique is to convert damage from wheel loads of various
magnitudes and repetitions (‘mixed traffic’) to damage from an equivalent
number of ‘standard’ or ‘equivalent’ loads.” The most common method used in
the industry to assess damage to a layered road from traffic is through the
application of the 1993 AASHTO Flexible Pavement Structural Design Model.
The AASHTO Design Model is the culmination of decades of empirical research
compiled by AASHTO from test roads and would be known to a person of
ordinary skill in the art.
32. In addition ·to the subgrade resilient modulus (a measure of subgrade material
stiffness), variables of the AASHTO Design Model include the predicted loading
(the number of 18,000-lb equivalent single axle loads (EASL)), the intended
reliability (the probability that the pavement will perform reliably), the pavement
number (the “structural number,” expressing structural strength of a pavement in
terms of soil support, total traffic, terminal serviceability, and environment), and
serviceable life (the difference in present serviceability index between
construction and end-of-life), the layer depths, and the number of base layers. The
model would be used, for example, to determine the necessary thickness of layers
in a road design to meet a likelihood of failure of the road given various loads and
environmental conditions. However, the AASHTO Design Model does not
provide an estimate of depth of rutting or rutting resistance, and could not be used
to determine if the ‘581 patent rutting requirement were met. A person of ordinary
skill in the art would not be able to use the AASHTO Design Model or any other
commercially available design models to assess the rutting resistance of a load
bearing structure made using the ‘581 patent process.
…
37. It is my opinion that a person of ordinary skill in the art would understand, in
the abstract, the concept of 10,000 applications of a 18,000 pound single axle
load. Such a person would also understand the relationship of this concept to
rutting and resistance to rutting of a layered road surface. However, I do not think
that a person of ordinary skill in the art, based on the ‘581 Patent specification and
29
prosecution history, at the time the ‘581 Patent was filed (or today) could
determine if the load bearing structure made, using the process taught by the SESI
patent, could meet the rutting requirement of <1”.”
(See, e.g., Akeman Dec. at ¶¶31-32 (Dkt. No. 74-4); Patton Dec. at ¶37 (Dkt. No. 74-5).)
The patent specification teaches that a layered elastic model (“LEM”) is the preferred
structural technique to estimate the required engineering properties and thickness requirements
of the claimed mixture. (See, e.g., ‘581 patent, col. 17, l. 37 – col. 19, l. 9.) The LEM calculates
stresses and strains within the pavement system. (Id. at col. 17, ll. 46-48.) There seems to be no
dispute between the parties, and the Court finds that the specification teaches a connection and
relationship between the number of load applications, subgrade strength, structural layer
thickness, and structural layer strength and modulus. (Id. at col. 17, ll. 54-57.) Table 2 of the
‘581 patent and the related disclosure illustrates some results of the factorial LEM analysis. (Id.
at col. 17, l. 54 – col. 19, l. 9.) In particular, the ‘581 patent specification expressly provides that
“[t]he thickness values recommended in Table 2 can accommodate at least 10,000 applications of
the design load with less than 1 inch depth of rutting.”
(Id. at col. 18, ll. 64-66.)
The
specification then provides that the “thicknesses in Table 2 are exact only for the specified
purposes and conditions.” (‘581 patent, col. 19, ll. 3-4.) The Defendant argues that because
many variables to the LEM testing were not provided, that the Table 2 values are meaningless
and that the disputed phrase is indefinite. The Court disagrees. While each and every possible
parameter (e.g. tire width/pressure or the environmental temperature) related to the LEM analysis
may not have been provided in the ‘581 patent, the lack of absolute precision1 does not make the
disputed term – which the parties agree is definite on its face – indefinite, unclear, or ambiguous.
1
In addition to tire width/pressure or the environmental temperature, one imagines—as an increasingly difficult
physics professor might—how the requirements for precision continue to spiral out nearly indefinitely (e.g. tire
material, tire tread pattern, tire wear).
30
See Nautilus, 134 S. Ct. at 2129 (describing that “[t]he definiteness requirement . . . mandates
clarity, while recognizing that absolute precision is unattainable”)
Indeed, the Court finds that the parties do not dispute the meaning of the disputed term
itself. Rather, the parties, through their experts, dispute how one of ordinary skill in the art
would assess whether an accused process meets the disputed claim limitation and how to
measure the claimed rutting resistance. In other words, the Parties dispute the proper specific
test a person of ordinary skill would use to determine whether a particular embodiment meets the
limitation.2 From a review of the briefing, the Parties’ arguments as to this limitation appear to
be infringement or enablement arguments—not indefiniteness arguments. See Exxon Research
and Engineering Co. v. US, 265 F. 3d 1371, 1382 (Fed. Cir. 2001) (the invention’s operability
may say nothing about a skilled artisan’s understanding of the bounds of the claims); see also
Personalized Media Communications, L.L.C. v. Int’l Trade Comm’n, 161 F.3d 696, 706-07 (Fed.
Cir. 1998) (a claim of clear scope that is not adequately supported by an enabling disclosure
commensurate with that scope is objectionable under the enablement requirement of § 112, ¶ 1,
not the indefiniteness requirement of § 112, ¶ 2). The Court finds that there is no dispute that
one of ordinary skill in the art would understand the meaning of the phrase “sufficient resistance
to rutting that any rut formed in such surface by 10,000 applications of a single axle load of
18,000 pounds will have a depth of rutting that is less than 1 inch.” Likewise, the Court finds
that there is no dispute that one of ordinary skill in the art would understand with “reasonable
certainty” the scope of the invention and the bounds of the claims. Accordingly, pursuant to the
Supreme Court’s holding in Nautilus, the Court rejects Defendant’s arguments that the claim
2
This is as one would imagine for any claim limitation having a specified performance requirement.
31
when “read in light of the specification delineating the patent, and the prosecution history, fail[s]
to inform, with reasonable certainty, those skilled in the art about the scope of the invention.”
The Court hereby construes “sufficient resistance to rutting that any rut formed in
such surface by 10,000 applications of a single axle load of 18,000 pounds will have a depth
.
of rutting that is less than 1 inch” to have its plain meaning.
IV. CONCLUSION
The Court adopts the above constructions set forth in this opinion for the disputed terms
of the patent-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 3rd day of January, 2012.
SIGNED this 26th day of August, 2014.
____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE
32
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