Promethean Insulation Technology LLC v. Reflectix, Inc.
Filing
57
MEMORANDUM OPINION AND ORDER. Signed by Magistrate Judge Roy S. Payne on 12/16/2015. (nkl, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
PROMETHEAN INSULATION
TECHNOLOGY LLC,
Plaintiff,
Case No. 2:15-cv-00028-JRG-RSP
LEAD CASE
v.
REFLECTIX, INC., ET AL.,
Defendants.
MEMORANDUM OPINION AND ORDER
Before the Court is the opening claim construction brief of Promethean Insulation
Technology LLC (“Plaintiff”) (Dkt. No. 44, filed on October 6, 2015), 1 the response and motion for
partial summary judgment of indefiniteness of Reflectix, Inc., SOPREMA, Inc. (United States),
SOPREMA, Inc. (Canada), and SOPREMA U.S.A., Inc. (collectively “Defendants”) (Dkt. No. 48,
filed on October 20, 2015), and the reply of Plaintiff (Dkt. No. 49, filed on October 27, 2015). The
Court held a hearing on the issues of claim construction and claim definiteness on November 17,
2015. Having considered the arguments and evidence presented by the parties at the hearing and in
their briefing, the Court issues this Order.
1
Citations to the parties’ filings are to the filing’s number in the docket (Dkt. No.) and pin cites
are to the page numbers assigned through ECF.
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Table of Contents
I.
BACKGROUND ............................................................................................................... 3
II.
LEGAL PRINCIPLES ..................................................................................................... 3
A. Claim Construction ............................................................................................................. 3
B. Departing from the Ordinary Meaning of a Claim Term .................................................... 6
C. Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA) / § 112(b) (AIA) ............................... 7
III.
CONSTRUCTION OF AGREED TERMS .................................................................... 8
IV.
CONSTRUCTION OF DISPUTED TERMS ................................................................. 9
V.
CONCLUSION ............................................................................................................... 13
2
I.
BACKGROUND
Plaintiff alleges infringement of U.S. Patent No. 8,936,847 (the “’847 Patent”). The ’847
Patent is entitled “Metallized Polymeric Film Reflective Insulation Material” and names a single
inventor, Furio Orologio. The application leading to the ’847 Patent was filed on November 8,
2012 and the patent issued on January 20, 2015. The ’847 Patent is related through a foreign
priority claim and a series of continuation, divisional, and continuation-in-part applications to a
Canadian patent application filed on April 19, 2006. In Promethean Insulation Tech. LLC v.
Sealed Air Corp., et al., No. 2:13-cv-1113-JRG-RSP, the Court considered several of the patents
in this priority chain.
In general, the ’847 Patent is directed to insulation materials that incorporate a reflective
metallized polymeric film to effect an improved fire rating over reflective insulation materials
that incorporate a reflective metal foil.
The abstract of the ’847 Patent provides:
The invention relates to a reflective insulation material product including a
metallized polymeric film laminated to an insulation material with the metallized
polymeric film having its exposed metallic surface facing away from the
insulation material. The product can meet Class A standard thermal insulation
material standards characterized by a flame speed rating of from 0 to 25 and a
smoke developed rating value of 0 to 450.
II.
LEGAL PRINCIPLES
A.
Claim Construction
“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. Id. at 1313; C.R. Bard, Inc. v. U.S. Surgical Corp., 388
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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 the claims themselves, the
specification, and the prosecution history. Phillips, 415 F.3d at 1314; C.R. Bard, Inc., 388 F.3d at
861. The general rule—subject to certain specific exceptions discussed infra—is that each claim
term is construed according to its 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 patent. Phillips, 415 F.3d
at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir. 2003); Azure
Networks, LLC v. CSR PLC, 771 F.3d 1336, 1347 (Fed. Cir. 2014) (“There is a heavy
presumption that claim terms carry their accustomed meaning in the relevant community at the
relevant time.”) (vacated on other grounds).
“The claim construction inquiry . . . begins and ends in all cases with the actual words of
the claim.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998).
“[I]n all aspects of claim construction, ‘the name of the game is the claim.’” Apple Inc. v.
Motorola, Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014) (quoting In re Hiniker Co., 150 F.3d 1362,
1369 (Fed. Cir. 1998)). First, a term’s context in the asserted claim can be instructive. Phillips,
415 F.3d at 1314. 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
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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). 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. “[I]t is improper to read limitations from a preferred embodiment described in the
specification—even if it is the only embodiment—into the claims absent a clear indication in the
intrinsic record that the patentee intended the claims to be so limited.” Liebel-Flarsheim Co. v.
Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004).
The prosecution history is another tool to supply the proper context for claim
construction because, like the specification, the prosecution history provides evidence of how the
U.S. Patent and Trademark Office (“PTO”) and the inventor understood the patent. Phillips, 415
F.3d at 1317. However, “because the prosecution history represents an ongoing negotiation
between the PTO and the applicant, rather than the final product of that negotiation, it often lacks
the clarity of the specification and thus is less useful for claim construction purposes.” Id. at
1318; see also Athletic Alternatives, Inc. v. Prince Mfg., 73 F.3d 1573, 1580 (Fed. Cir. 1996)
(ambiguous prosecution history may be “unhelpful as an interpretive resource”).
Although extrinsic evidence can also 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
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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 Supreme Court recently explained the role of extrinsic evidence in claim
construction:
In some cases, however, the district court will need to look beyond the patent’s
intrinsic evidence and to consult extrinsic evidence in order to understand, for
example, the background science or the meaning of a term in the relevant art
during the relevant time period. See, e.g., Seymour v. Osborne, 11 Wall. 516, 546
(1871) (a patent may be “so interspersed with technical terms and terms of art that
the testimony of scientific witnesses is indispensable to a correct understanding of
its meaning”). In cases where those subsidiary facts are in dispute, courts will
need to make subsidiary factual findings about that extrinsic evidence. These are
the “evidentiary underpinnings” of claim construction that we discussed in
Markman, and this subsidiary factfinding must be reviewed for clear error on
appeal.
Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015).
B.
Departing from the Ordinary Meaning of a Claim Term
There are “only two exceptions to [the] general rule” that claim terms are construed
according to their plain and ordinary meaning: “1) when a patentee sets out a definition and acts
as his own lexicographer, or 2) when the patentee disavows the full scope of the claim term
either in the specification or during prosecution.” 2 Golden Bridge Tech., Inc. v. Apple Inc., 758
F.3d 1362, 1365 (Fed. Cir. 2014) (quoting Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d
2
Some cases have characterized other principles of claim construction as “exceptions” to the
general rule, such as the statutory requirement that a means-plus-function term is construed to
cover the corresponding structure disclosed in the specification. See, e.g., CCS Fitness, Inc. v.
Brunswick Corp., 288 F.3d 1359, 1367 (Fed. Cir. 2002).
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1362, 1365 (Fed. Cir. 2012)); see also GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d
1304, 1309 (Fed. Cir. 2014) (“[T]he specification and prosecution history only compel departure
from the plain meaning in two instances: lexicography and disavowal.”). The standards for
finding lexicography or disavowal are “exacting.” GE Lighting Solutions, 750 F.3d at 1309.
To act as his own lexicographer, the patentee must “clearly set forth a definition of the
disputed claim term,” and “clearly express an intent to define the term.” Id. (quoting Thorner,
669 F.3d at 1365); see also Renishaw, 158 F.3d at 1249. The patentee’s lexicography must
appear “with reasonable clarity, deliberateness, and precision.” Renishaw, 158 F.3d at 1249.
To disavow or disclaim the full scope of a claim term, the patentee’s statements in the
specification or prosecution history must amount to a “clear and unmistakable” surrender. Cordis
Corp. v. Boston Sci. Corp., 561 F.3d 1319, 1329 (Fed. Cir. 2009); see also Thorner, 669 F.3d at
1366 (“The patentee may demonstrate intent to deviate from the ordinary and accustomed
meaning of a claim term by including in the specification expressions of manifest exclusion or
restriction, representing a clear disavowal of claim scope.”) “Where an applicant’s statements are
amenable to multiple reasonable interpretations, they cannot be deemed clear and unmistakable.”
3M Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1326 (Fed. Cir. 2013).
C.
Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA) / § 112(b) (AIA) 3
Patent claims must particularly point out and distinctly claim the subject matter regarded
as the invention. 35 U.S.C. § 112, ¶ 2. A claim, when viewed in light of the intrinsic evidence,
must “inform those skilled in the art about the scope of the invention with reasonable certainty.”
Nautilus Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). If it does not, the claim
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As the application for the ’847 Patent was filed after September 16, 2012, the effective date of
the America Invents Act (“AIA”), the AIA version of 35 U.S.C. § 112 governs. Since § 112(b)
(AIA) is substantially identical to § 112, ¶ 2 (pre-AIA), the Court applies pre-AIA precedent on
the issue of definiteness.
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fails § 112, ¶ 2 and is therefore invalid as indefinite. Id. at 2124. Whether a claim is indefinite is
determined from the perspective of one of ordinary skill in the art as of the time the application
for the patent was filed. Id. at 2130. 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. Id. at
2130 n.10. “[I]ndefiniteness is a question of law and in effect part of claim construction.” ePlus,
Inc. v. Lawson Software, Inc., 700 F.3d 509, 517 (Fed. Cir. 2012).
When a term of degree is used in a claim, “the court must determine whether the patent
provides some standard for measuring that degree.” Biosig Instruments, Inc. v. Nautilus, Inc.,
783 F.3d 1374, 1378 (Fed. Cir. 2015) (quotation marks omitted). Likewise, when a subjective
term is used in a claim, “the court must determine whether the patent’s specification supplies
some standard for measuring the scope of the [term].” Datamize, LLC v. Plumtree Software, Inc.,
417 F.3d 1342, 1351 (Fed. Cir. 2005); accord Interval Licensing LLC v. AOL, Inc., 766 F.3d
1364, 1371 (Fed. Cir. 2014) (citing Datamize, 417 F.3d at 1351).
III.
CONSTRUCTION OF AGREED TERMS
The parties have agreed to the following constructions set forth in their Amended Joint
P.R. 4-5(d) Claim Construction Chart (Dkt. No. 51):
Term 4
Agreed Construction
The reflective metallized layer with the
lacquer coating positioned externally to the
polymeric material such that the reflective
“is exposed”
•
Claims 1, 56, 57, 60, 66
4
For all term charts in this order, the claims in which the term is found are listed with the term
but: (1) only the highest level claim in each dependency chain is listed, and (2) only asserted
claims identified in the Amended Joint P.R. 4-5(d) Claim Construction Chart (Dkt. No. 51) are
listed.
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Term 4
Agreed Construction
metallized layer of the thermoplastic film
faces away from the polymeric material.
(Claim 1) 5
“exposed”
•
Claims 16, 17, 19, 36
The reflective metallized layer with the
lacquer coating positioned externally to the
bubble pack assembly such that the reflective
metallized layer of the thermoplastic film
faces away from the bubble pack assembly.
(Claim 57)
The reflective metallized layer with the
lacquer coating positioned externally to the
multilayer assembly such that the reflective
metallized layer of the thermoplastic film
faces away from the multilayer assembly.
(Claim 60)
Having reviewed the intrinsic and extrinsic evidence of record, the Court agrees with and
hereby adopts the parties’ agreed constructions.
IV.
CONSTRUCTION OF DISPUTED TERMS
The parties’ sole claim-construction dispute is whether the terms “flexibility for potential
wrapping applications” and “flexible for potential wrapping applications” (the “Flexible Terms”)
render any claim indefinite. (Dkt. No. 51-1).
Disputed Term
“flexibility for potential
wrapping applications”
•
Defendants’ Proposed
Construction
Indefinite.
No construction necessary.
Indefinite.
Claims 1, 19
“flexible for potential
wrapping applications”
•
Plaintiff’s Proposed
Construction
No construction necessary.
Claim 36
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In its reply brief, Plaintiff explained that a common construction for the exposed limitations
would apply to Claims 1, 16, 17, 19, 36, 56, and 66. Dkt. No. 49 at 5.
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Because the parties’ arguments and proposed constructions with respect to these terms
are related, the Court addresses the terms together.
The Parties’ Positions
Plaintiff submits that the Flexible Terms “merely require that the claimed reflective
insulation product be flexible enough to enable its use in potential wrapping applications, i.e.,
such as wrapping a pipe or duct work.” (Dkt. No. 44 at 14). Plaintiff further submits that the
issue of indefiniteness was expressly and successfully addressed in prosecution of the application
which issued as the ’847 Patent, when Plaintiff (as the patent applicant) explained that the
Flexible Terms mean that the product “definitely” has “flexibility of such a nature that it can be
used for wrapping applications,” whether or not it is used in a wrapping application. (Id. at 14–
15). And Plaintiff submits that the ’847 Patent provides examples of wrapping applications, such
as wrapping of “water heaters, pipes and the like.” (Id. at 15). Finally, Plaintiff submits that the
terms “flexible” and “flexibility” are readily understood terms that have appeared in claims in
over 900,000 issued patents. (Id. at 14–15).
In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic
evidence to support its position. Intrinsic evidence: ’847 Patent col.1 ll.17–20; ’847 Patent File
Wrapper, Response to Office Action Mailed January 15, 2014 (excerpts) (Plaintiff’s Ex. 12, Dkt.
No. 44-12). Extrinsic evidence: List of Results of Search of U.S. Patent Collection Database for
“flexibility” or “flexible” in the claims (undated) (Plaintiff’s Ex. 13, Dkt. No. 44-13).
Defendants respond that independent Claims 1, 19, and 36 require the insulation product
to be “sufficiently flexible” for “potential wrapping applications.” (Dkt. No. 48 at 4). And,
Defendants’ argue, because the range of “potential wrapping applications” is unbounded, the
degree of flexibility is undefined. (Id. at 3–5). Defendants thus conclude that one of skill in the
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art cannot reasonably ascertain whether a particular product is “sufficiently flexible,” and the
claims are therefore indefinite. (Id.) Defendants further argue that Plaintiff (as the patent
applicant) essentially conceded that an undefined level of flexibility renders the claims indefinite
when it conceded in prosecution that the term “potentially flexible for wrapping applications”
would render claims indefinite. (Id. at 4–5).
In addition to the claims themselves, Defendants cite the following intrinsic evidence to
support its position: ’847 Patent File Wrapper, February 28, 2014 Response to Office Action
Mailed January 15, 2014 (Defendants’ Ex. A, Dkt. No. 48-1).
Plaintiff replies that the Flexible Terms mean the product is definitely flexible, and that
the word “potential” in the terms means that product can be—but need not be—used in a
wrapping application. (Dkt. No. 49 at 6). Plaintiff further replies that the patent provides
“specific examples of such flexible wrapping applications.” (Id.) And Plaintiff argues that the
terms do not render any claim indefinite because one of ordinary skill in the art would
understand if a particular product has such flexibility as to be outside the scope of the claims. (Id.
at 7).
Analysis
The dispute over these terms distills to whether the ’847 Patent provides enough guidance
regarding how flexible the material must be to be suitable for “wrapping applications.” Because
the Court determines that the patent provides adequate guidance for the required degree of
flexibility, the Court holds that the terms are definite.
“Flexible” and “flexibility” are used in the claims as terms of degree. As Plaintiff stated
in its opening brief, the terms require the claimed product to be “flexible enough” for wrapping
applications. (Dkt. No. 44 at 14). And Plaintiff, as the patent applicant, clarified in the
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prosecution history that the term “flexibility for potential wrapping applications” requires a
degree of flexibility—“flexibility of such a nature that [the product] can be used for wrapping
applications.” February 28, 2014 Response to Office Action Mailed January 15, 2014 at 19 (Dkt.
No. 48-1 at 20).
As the terms are terms of degree, “the court must determine whether the patent provides
some standard for measuring that degree.” Biosig Instruments, Inc. v. Nautilus, Inc., 783 F.3d
1374, 1378 (Fed. Cir. 2015). This standard must “inform those skilled in the art about the scope
of the invention with reasonable certainty.” Id. at 1379 (quoting Nautilus Inc. v. Biosig
Instruments, Inc., 134 S. Ct. 2120, 2129 (2014)) (emphasis in original). “The degree of precision
necessary for adequate claims is a function of the nature of the subject matter.” Id. at 1382
(quoting Miles Labs., Inc. v. Shandon, Inc., 997 F.2d 870, 875 (Fed. Cir. 1993)) (quotation
modification marks omitted). But “absolute or mathematical precision is not required.” Id. at
1381 (quoting Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371–72 (Fed. Cir. 2014)).
The ’847 Patent provides a standard for determining whether a particular degree of
flexibility satisfies the flexible and flexibility limitations. The claim language itself states that the
claimed product must be flexible for “wrapping applications.” See, e.g., ’847 Patent col.24 ll.48–
49 (Claim 1) (“wherein the reflective insulation product . . . has flexibility for potential wrapping
applications”). And the patent provides examples of the kind potential wrapping applications
contemplated:
It is an object of the present invention to provide metallized polymeric film
reflective insulation material having Class A thermal insulation properties,
particularly, metallized bubble pack insulation material for use in . . . wrapping
for water heaters, pipes and the like.
Id. at col.4 l.62 – col.5 l.4; see also, col.1 ll.31–44 (“metal foil bubble-pack is used as
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. . . wrapping for hot water heaters, hot and cold water pipes, air ducts and the like”). The patent
discloses insulation suitable to wrap objects of a size comparable to water heaters, water pipes,
and air ducts. As such, the patent provides a standard for sufficient flexibility. Even though the
patent does not numerically state a minimum degree of flexibility, one of ordinary skill in the art
would understand that material that was not flexible enough to wrap objects of a size comparable
to that of water heaters, water pipes, and air ducts would not satisfy the flexible or flexibility
limitations. For example, Defendants posited a hypothetical material that is flexible enough to
wrap an object with a 12-foot diameter (the fuselage of a 757 jet), but not flexible enough to
wrap around an object with a 18-24” diameter (a water heater). Contrary to Defendants assertion,
one of ordinary skill in the art reading the patent specification would understand that material not
sufficiently flexible to wrap a water heater would fall outside the scope of the flexible/flexibility
.
limitations, regardless of whether that material was flexible enough to wrap a much larger object.
Therefore, the Flexible Terms are not indefinite.
V.
CONCLUSION
The Court adopts the constructions set forth in this opinion for the disputed and agreed
terms of the ’847 Patent. 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.
SIGNED this 3rd day of January, 2012.
SIGNED this 16th day of December, 2015.
____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE
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