Millennium Cryogenic Technologies, Ltd. v. Weatherford Artificial Lift Systems, Inc. et al
Filing
159
MEMORANDUM AND ORDER (Signed by Judge Keith P Ellison) Parties notified.(sloewe)
IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF TEXAS
HOUSTON DIVISION
MILLENNIUM CRYOGENIC
TECHNOLOGIES, LTD.,
Plaintiff,
v.
WEATHERFORD ARTIFICIAL
LIFT SYSTEMS, INC., et al.,
Defendants.
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Civil Action No. H-12-0890
MEMORANDUM AND ORDER
In this patent infringement suit, the parties seek construction of several terms
contained in the asserted claims of U.S. Patent No. RE 42,416 (the “’416 Patent”). The
Court held a hearing on September 19, 2012, during which the parties presented argument
in support of their proposed constructions. This Court now construes the disputed claim
terms as a matter of law under Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed.
Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996).
I. BACKGROUND
This case involves a patent for a process for the removal of worn elastomer stators
from certain motors or pumps used in the petroleum industry. Specifically, the ’416 Patent,
entitled, “Method of Removing Stators From Tubular Stator Housings,” describes a method
of removing worn stators from tubular stator housings by subjecting the housing to cryogenic
refrigeration until the stator shrinks and pulls away from the interior surface of the housing.
Plaintiff MCT asserts through one or more causes of action in this lawsuit that Defendant
Weatherford’s processes infringe on the ’416 Patent.
The ’416 Patent includes eleven claims. U.S. Patent RE 42,416 cols. 3: 1–40, 4: 1–40.
Claims 1, 4, and 6 are independent. Claims 2 and 3 depend from independent Claim 1, Claim
5 depends from independent Claim 4, and Claims 7–11 depend from independent Claim 6.
The ’416 Patent is a reissue of U.S. Patent No. 6,973,707 (the “’707 Patent”). Claims 1–5
of the ’416 Patent originally issued with the ’707 Patent, while Claims 6–11 were added
during reissue proceedings. U.S. Patent RE 42,416 col. 1:4–9.
A.
Background and Invention
The “Background of the Invention” for the ’416 Patent states as follows:
In the petroleum industry extensive use is made of moineau style pumps, so
named after the french aviator who invented them. These pumps utilize metal
rotators and polymer plastic rotors. The stators are secured with adhesive
within a tubular stator housing. When a moineau style pump is new, there is
a tight sealing engagement between the tubular stator housing and the stator.
Upon rotation of the rotor, liquids are moved sequentially through a series of
cavities formed between the tubular stator housing and the stator. After
prolonged use the polymer plastic stator begins to wear and the rotator and
stator are no longer able to move liquids efficiently due to inadequate sealing.
In order to service the moineau pump, the worn polymer plastic stator must be
removed from the tubular stator housing and replaced with a new stator. At
the present time the removal of the worn stator represents approximately one
half of the cost of replacing the stator. Hydraulic or mechanical rams are used
to break the bond of the adhesive and push the worn stator out of the stator
housing. The tubular stator housing must then be reamed out to remove any
residue of polymer plastic which remains.
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B.
Summary of the Invention
The patent provides a “Summary of the Invention,” as follows:
What is required is a method of removing stators from tubular stator housings
which will simplify removal and lower the cost of removal.
According to the present invention there is provided a method of removing
stators from tubular stator housings, involving subjecting a tubular stator
housing having an interior surface to which a worn stator is adhered by
adhesive to cryogenic refrigeration until the stator shrinks and pulls away from
the interior surface of the tubular stator housing.
The method, as described above, provides an alternative to the use of rams.
More importantly, it removes the worn stator in a comparably clean fashion
thereby reducing the reaming and post reaming preparation of the interior
surface of the tubular stator housing. Reducing reaming and post reaming
preparation provides a substantial savings.
C.
Detailed Description of the Preferred Embodiment
The “Detailed Description of the Preferred Embodiment” reads as follows:
The preferred method of removing stators from tubular stator housings will
now be described with reference to FIG. 1.1
Referring to FIG. 1, the preferred method involves subjecting a tubular stator
housing having an interior surface to which a worn stator is adhered by
adhesive to cryogenic refrigeration in a cryogenic refrigeration unit until worn
stator shrinks and pulls away from interior surface of tubular stator housing.
The cryogenic temperature range starts at approximately minus 50 degrees
celsius. It will be understood that the method works on a combination of
temperature and time. As the temperature is made colder within the cryogenic
temperature range, the less time it takes for the worn stator to shrink
sufficiently to pull away from the interior surface. In tests proving the concept
1
Because the Figure 1 diagram has not been reproduced within this Memorandum and
Order, the label numbers appearing within the quoted materials have been deleted.
3
a temperature range of between minus 150 degrees celsius and minus 200
degrees celsius was used.
In order to avoid thermal shock, the temperature of tubular stator housing must
be gradually brought down into the cryogenic range and then gradually brought
back up. In tests proving the concept the temperature was brought down by
2.5 degrees celsius per minute until minus 196 degrees celsius, the temperature
of liquid nitrogen, was reached. Once worn stator separated from tubular
stator housing, the temperature was brought back up at the rate of 2.5 degrees
celsius per minute. There was minimal dwell time required at minus 196
degrees celsius. The time consuming part of the process was in gradually
bringing down and then bringing up the temperature, which took
approximately 3 to 24 hours. Although the preferred range of between minus
150 degrees celcius [sic] to minus 200 degrees celcius [sic] was used in tests,
lower cryogenic temperatures may be used. Some experimentation would be
required to determine the optimal temperature and dwell time.
Once worn stator has shrunk and pulled away from interior surface, removal
of worn stator from tubular stator housing becomes an extremely simple
matter. Worn stator is removed simply by exerting force upon worn stator to
slide worn stator out of tubular stator housing as indicated by arrow. It will be
understood that this can be done in any number of ways. It can be done by
pushing or pulling upon worn stator. It can also be done by tipping tubular
stator housing, so that stator slides from tubular stator housing by force of
gravity. It can also be done by utilizing centrifugal force or other principles
of physics.
Cautionary Note:
In most cases the cryogenic treatment will actually enhance the mechanical
properties of tubular stator housing. Cryogenic treatments are used on metal
to increase abrasion resistence, toughness, dimensional stability and tensile
strength. However, there is a danger that ostentite will be transformed into
martensite in some metals. In such cases, the virgin martensite will have to be
tempered through a subsequent heat treatment.
It will be apparent to one skilled in the art that modifications may be made to
the illustrated embodiment without departing from the spirit and scope of the
invention as hereinafter defined in the Claims.
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D.
The Claims
The three independent claims are set forth below, with disputed terms highlighted in
bold type. The related dependent claims are set forth under each independent claim. Key to
all or most of the disputed claims are the terms or phrases, “gradually,” “cryogenic levels,”
“cryogenic temperature,” “thermal shock,” “temperature in the cryogenic refrigeration unit,”
and “ambient temperatures.”
Claim 1 of the ’416 Patent (independent) provides as follows:
A method of removing stators from tubular stator housings, comprising the steps of:
placing a metal tubular stator housing having an interior surface to which a
worn elastomer moineau-style stator is adhered by adhesive into a cryogenic
refrigeration unit;
lowering the temperature in the cryogenic refrigeration unit gradually to
cryogenic levels in order to avoid thermal shock to the tubular stator
housing;
raising the temperature of the tubular stator housing gradually to
ambient temperatures, the stator shrinking and pulling away from the
interior surface of the tubular stator housing as the temperature is
gradually lowered and then gradually raised.
Claim 2 (dependent) states, “The method as defined in claim 1, the tubular metal
stator housing being subjected to temperatures between minus 150 degrees celcius
[sic] and minus 200 degrees celsius.”
Claim 3 (dependent) states, “The method as defined in claim 1, wherein the
temperature in the cryogenic refrigeration unit is gradually decreased to cryogenic
levels over a period of time of approximately 3 to 24 hours.”
Claim 4 of the ’416 Patent (independent) provides as follows:
A method of removing stators from tubular stator housings, comprising the steps of:
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placing a tubular metal stator housing having an interior surface to which a
worn elastomer moineau-style stator is adhered by adhesive into a cryogenic
refrigeration unit;
lowering the temperature in the cryogenic refrigeration unit gradually to
cryogenic levels in order to have the tubular metal stator housing and the
stator shrink at substantially the same rate and avoid thermal shock, the
temperatures in the cryogenic refrigeration unit reaching temperatures
of between minus 150 degrees celsius and minus 200 degrees celsius;
raising the temperature in the cryogenic refrigeration unit gradually to
ambient temperatures in order to avoid thermal shock, the stator
shrinking and pulling away from the interior surface of the tubular stator
housing as the temperature is gradually lowered and then gradually
raised; and
exerting a force upon the stator to slide the stator out of the tubular stator
housing.
Claim 5 (dependent) states, “The method as defined in claim 4, wherein the
temperature in the cryogenic refrigeration unit is gradually decreased to cryogenic
levels over a period of time of approximately 3 to 24 hours.”
Claim 6 of the ’416 Patent (independent) provides as follows:
A method of removing an elastomer moineau-style stator adhesively adhered to an
interior surface of a metal tubular stator housing, the method comprising the steps of:
placing the metal tubular stator housing, having the stator adhesively adhered to the
interior surface of the stator housing, into a cryogenic refrigeration unit; gradually
lowering the temperature in the cryogenic refrigeration unit to a cryogenic
temperature of between minus 150 degrees celsius and minus 200 degrees celsius
so as to avoid thermal shock to at least the metal tubular stator housing and cause
the metal tubular stator housing and the stator to shrink at substantially a same rate;
allowing the stator, at the cryogenic temperature, to substantially separate from
the interior surface of the tubular stator housing during the gradually lowering
the temperature in the cryogenic refrigeration unit; and
removing the stator from the housing following the gradually lowering the
temperature in the cryogenic refrigeration unit.
Claim 7 (dependent) states, “The method of claim 6 further comprising the step of
gradually lowering the temperature in the cryogenic refrigeration unit from a starting
temperature of approximately minus 50 degrees celsius.”
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Claim 8 (dependent) states, “the method of claim 6 further comprising the steps [sic]
of gradually raising the temperature of the tubular stator housing.”
Claim 9 (dependent) states, “The method of claim 6 further comprising the step of
gradually decreasing the temperature in the refrigeration unit at a rate of
approximately 2.5 degrees celsius per minute.”
Claim 10 (dependent) states, “The method of claim 6 further comprising the step of
gradually decreasing the temperature in the refrigeration unit over a period of time of
approximately 1 hour.”
Claim 11 (dependent) states, “The method of claim 6 further comprising the step of
gradually decreasing the temperature in the refrigeration unit to a temperature of
approximately minus 196 degrees celsius.”
(Docket Entry No. 114, pp. 2–3; original italics deleted; boldface added).
II. LEGAL STANDARDS
A.
Claim Construction
Claim construction is a matter of law, and the task of determining the proper
construction of all disputed claims lies with the Court. Markman, 517 U.S. at 372. The
Federal Circuit has opined extensively on the proper approach to claim construction, most
notably in its opinion in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
In Phillips, the Federal Circuit expressly reaffirmed the principles of claim construction as
set forth in Markman, Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996),
and Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111 (Fed. Cir.
2004).
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The goal of a Markman hearing is to arrive at the ordinary and customary meaning of
a claim term in the eyes of a person of ordinary skill in the art. Phillips, 415 F.3d at 1313.
“[T]he person of ordinary skill in the art is deemed to read the claim term not only in the
context of the particular claim in which the disputed term appears, but in the context of the
entire patent, including the specification.” Id.
Two categories of evidence exist with respect to the meaning of claim language:
evidence intrinsic to the patent— the patent itself, including the claims, the specification and,
if in evidence, the prosecution history—and evidence extrinsic to the patent, such as expert
testimony. Vitronics, 90 F.3d at 1582. Extrinsic evidence is “less significant than the
intrinsic record in determining the legally operative meaning of claim language.” Phillips,
415 F.3d at 1317. The Court should first look to intrinsic evidence to decide if it clearly and
unambiguously defines the disputed terms of the claim. Vitronics, 90 F.3d at 1585. Only
then may the Court consider the potential use of extrinsic evidence.
In construing claim terms, the court must also determine whether any claim terms are
invalid as being indefinite. Under the statutory requirement for definiteness, the claims must
particularly point out and distinctly claim the subject matter which the applicant regards as
his invention. 35 U.S.C. § 112, ¶ 2. “The purpose of the definiteness requirement is to
ensure that the claims delineate the scope of the invention using language that adequately
notifies the public of the patentee’s right to exclude.” Datamize, LLC v. Plumtree Software,
Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005). However, the definiteness requirement does not
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compel absolute clarity; only claims not amenable to construction or insolubly ambiguous
are to be held indefinite. Id.
In interpreting a term for purposes of claim construction, the court should strive to
remain faithful to the inventor and the invention, as expressed through the claim language.
As observed by the Federal Circuit in Phillips,
Ultimately, the interpretation to be given a term can only be determined and
confirmed with a full understanding of what the inventors actually claim. The
construction that stays true to the claim language and most naturally aligns
with the patent’s description of the invention will be, in the end, the correct
construction.
415 F.3d at 1316. Under no circumstances is the court to redraft claims, whether to make
them operable or to sustain their validity. Chef Am., Inc. v. Lamb-Weston, Inc., 358 F.3d
1371, 1374 (Fed. Cir. 2004).
1.
Claim Language
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, 415 F.3d at 1312; Innova/Pure
Water Inc., 381 F.3d at 1115. In claim construction, courts examine the patent’s intrinsic
evidence to define the patented invention’s scope. Id.; C.R. Bard, Inc. v. U.S. Surgical Corp.,
388 F.3d 858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Communications
Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). Courts give claim terms their ordinary
and accustomed meaning as understood by one of ordinary skill in the art at the time of the
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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 Court begins, as it must, with the words of the claim. Teleflex, Inc. v. Ficosa N.
Am. Corp., 299 F.3d 1313,1324 (Fed. Cir. 2002); see also CCS Fitness, Inc. v. Brunswick
Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (“The terms used in the claims bear a
presumption that they mean what they say and have the ordinary meaning that would be
attributed to those words by persons skilled in the relevant art.”). The claims themselves
provide substantial guidance in determining the meaning of particular claim terms. Phillips,
415 F.3d at 1314; see also Amgen , Inc. v. Hoechst Marion Roussell, Inc., 314 F.3d 1313,
1325 (Fed. Cir. 2003) (“It is the claims that measure the invention.”). A term’s context in
the asserted claim can be very instructive. Phillips, 415 F.3d at 1314. Other asserted or
unasserted claims can also aid in determining a claim’s meaning because claim terms are
typically used consistently throughout the patent. Id. Differences among 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. See also O2 Micro Int’l Ltd. v. Beyond Innovation
Technology Co., 521 F.3d 1352, 1360 (Fed. Cir. 2008).
Thus, the inquiry into how a person of ordinary skill in the art understands a claim
term provides an objective baseline from which to begin claim interpretation. Phillips, 415
F.3d at 1313. That starting point is based on “the well-settled understanding that inventors
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are typically persons skilled in the field of the invention, and that patents are addressed to,
and intended to be ready by, others of skill in the pertinent art.” Id. A district court is not
obligated to construe terms with ordinary meanings, lest trial courts be inundated with
requests to parse the meaning of every word in the asserted claims. O2 Micro Int’l, 521 F.3d
at 1360; see also Biotec Biologische Naturverpackungen GmbH & Co. KG v. Biocorp, Inc.,
249 F.3d 1341, 1349 (Fed. Cir. 2001) (finding no error in non-construction of “melting”);
Mentor H/S, Inc. v. Med. Device Alliance, Inc., 244 F.3d 1365, 1380 (Fed. Cir. 2001)
(finding no error in lower court’s refusal to construe “irrigating” and “frictional heat”).
The determination whether to treat a preamble as a limitation on the claim turns on
the importance of the preamble in a particular patent. Bell Commc’ns Research, Inc. v.
Vitalink Commc’ns Corp., 55 F. 3d 615, 620 (Fed. Cir. 1995). “If the claim preamble, when
read in the context of the entire claim, recited limitations of the claim, or, if the claim
preamble is ‘necessary to give life, meaning, and vitality’ to the claim, then the claim
preamble should be construed as if in the balance of the claim.” Pitney Bowes, Inc. v.
Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999); see also Bell, 55 F.3d at 620
(“[W]hen the claim drafter chooses to use both the preamble and the body to define the
subject matter of the claimed invention, the invention so defined, and not some other, is the
one the patent protects.”) (original emphasis). On the other hand, a preamble should not be
read to limit the claim “where a patentee defines a structurally complete invention in the
claim body and uses the preamble only to state a purpose or intended use for the invention.”
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Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002); see
also Pitney Bowes, 182 F.3d at 1305 (holding that, where a preamble does nothing more than
state the purpose or intended use of an invention, the preamble is of no significance to claim
construction because it cannot be said to constitute or explain a claim limitation).
2.
Specification
In addition, the specification, or the part of the patent where the inventor describes and
illustrates the invention in significant detail, “is always highly relevant to the claim
construction analysis. Under the patent law, the specification must contain a written
description of the invention that enables one of ordinary skill in the art to make and use the
invention. 35 U.S.C. § 112. Usually it is dispositive; it is the single best guide to the
meaning of a disputed term.” Vitronics, 90 F.3d at 1582. 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. Also, the
specification may 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. v. Ficosa N. Am. Corp., 299
F.3d 1313, 1325 (Fed. Cir. 2002).
However, because the claim language, not the specification, describes the scope of the
patented invention, the specification may not alter the scope of the claim, and the Court must
not import limitations in the specification not found in the claim language. Phillips, 415 F.3d
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at 1323. The “distinction between using the specification to interpret the meaning of a claim
and importing limitations from the specification into the claim can be a difficult one to apply
in practice.” Id. (citation omitted). To successfully navigate it, the court’s focus should
remain on understanding how a person of ordinary skill in the art would understand the claim
terms in light of how they are used in the specification.
Id.; see also Retractable
Technologies, Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1305 (Fed. Cir. 2011) (“In
reviewing the intrinsic record to construe the claims, we strive to capture the scope of the
actual invention, rather than strictly limit the scope of claims to disclosed embodiments or
allow the claim language to become divorced from what the specification conveys is the
invention.”).
It is important to remember that, although the specification often describes very
specific embodiments of the invention, the Federal Circuit has cautioned against confining
the claims to those embodiments. See Phillips, 415 F.3d at 1323. The roles of the
specification are to “teach and enable those of skill in the art how to make and use the
invention and to provide a best mode for doing so. One of the best ways to teach a person
of ordinary skill how to make and use the invention is to provide an example of how to
practice the invention in a particular case.” Id. “[T]he claims of the patent, not its
specifications, measure the invention.” Innova/Pure Water, Inc., 381 F.3d at 1115.
“Accordingly, particular embodiments appearing in the written description will not be used
to limit claim language that has broader effect. And, even where a patent describes only a
13
single embodiment, claims will not be interpreted restrictively unless the patentee has
demonstrated a clear intention to limit the claim scope using words or expressions of
manifest exclusion or restriction.” Id. at 1117 (internal quotations omitted).
Thus, while the specification may describe very specific embodiments of the
invention, the claims are not to be confined to those embodiments. Ventana Medical
Systems, Inc. v. Biogenex Laboratories, Inc., 473 F.3d 1173, 1181 (Fed. Cir. 2006). An
accused infringer may not limit a claim term’s ordinary meaning “simply by pointing to the
preferred embodiment or other structures or steps disclosed in the specification[.]” CCS
Fitness, Inc. v. Brunswick Corp., 228 F.3d 1359, 1366 (Fed. Cir. 2002). The Federal Circuit
has repeatedly rejected the contention that “if a patent describes only a single embodiment,
the claims of the patent must be construed as being limited to that embodiment.” Phillips,
415 F.3d at 1323. Thus, courts must take extreme care when ascertaining the scope of a
claim not to simultaneously import into the claims limitations that were not intended by the
patentee. See Amgen, 314 F.3d at 1325.
At the same time, the Federal Circuit has recognized that limiting language in the
specification may properly be used to construe the terms of a patent. Amgen, 314 F.3d at
1323. The importance of limiting language in the specification has been discussed by the
Federal Circuit in terms that favor a restrictive reading. For example, in Lizardtech, Inc. v.
Earth Resource Mapping, Inc., 433 F.3d 1373, 1375 (Fed. Cir. 2006), the court stated:
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However, in whatever form the claims are finally issued, they must be
interpreted, in light of the written description, but not beyond it, because
otherwise they would be interpreted to cover inventions or aspects of an
invention that have not been disclosed. Claims are not necessarily limited to
preferred embodiments, but, if there are no other embodiments, and no other
disclosure, then they may be so limited. One does not receive entitlement to
a period of exclusivity for what one has not disclosed to the public.
See also Honeywell Int’l, Inc. v. ITT Indus., Inc., 452 F.3d 1312 (Fed. Cir. 2006) (holding
that the meaning of a claim was limited to the single embodiment disclosed in the
specification). There is “a fine line between reading a claim in light of the specification, and
reading a limitation into the claim from the specification.” Comark, 156 F.3d at 1186.
The parties in the present case disagree whether language or descriptions from the
instant patent specification may be used to limit the scope or meaning of one or more
disputed claims; that is, whether, and when, claim language may be limited by embodiments
disclosed in the specification. In Honeywell, the Federal Circuit, in construing the claim term
“fuel injection system component,” held that the term was limited to a fuel filter. 452 F.3d
at 1318. The court there noted that a fuel filter was discussed in the specification not merely
as a preferred embodiment, but as a limitation to the patent scope, because on at least four
occasions the specification referred to the fuel filter as “this invention” or “the present
invention.” Id. More recently, in Verizon Services Corp. v. Vonage Holdings Corp., 503
F.3d 1295, 1308 (Fed. Cir. 2007), the Federal Circuit reiterated that “when a patent [thus]
describes the features of the ‘present invention’ as a whole, this description limits the scope
of the invention.” These cases suggest, therefore, that the use of certain language such as
15
“present invention” or “this invention” raises the presumption that the claim terms can be
limited by the description of the invention provided in the specification.
However, the Federal Circuit has also held that, while clear language characterizing
“the present invention” may limit the ordinary meaning of claim terms, such language must
be read in context of the entire specification, the claims, and the prosecution history.
Rambus, Inc. v. Infineon Technologies Ag, 318 F.3d 1081, 1094–95 (Fed. Cir. 2003). In
Rambus, the Federal Circuit declined to limit the term “bus” to a “multiplexing bus,” noting
that, although the phrase “present invention” was used in certain parts of the specification,
the remainder of the specification and prosecution history showed that the patentee did not
“clearly disclaim or disavow” such claim scope. Id. The Rambus court went on to examine
the patent language and prosecution history, reasoning that “multiplexing is not a
requirement in all of [the patentee’s] claims.” Id. Accordingly, one district court, in
determining whether “present invention” language within the specification could be used to
limit the scope of a patent, determined that the specification language was being used to
describe only an embodiment of the invention. The court accordingly held that the claim
scope could not be limited so that the process of modifying a PDL image file was required
to be “automatic.”
3.
Prosecution History
Finally, the prosecution history, which has been designated as part of the “intrinsic
evidence,” consists of the complete record of the proceedings before the U.S. Patent and
16
Trade Office (“PTO”) and includes the prior art cited during the examination of the patent.
As with the specification, the prosecution history provides evidence of how the PTO and the
inventor understood the patent. Phillips, 415 F.3d at 1317. Yet, 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. Still, “a patentee may limit the meaning of a
claim term by making a clear and unmistakable disavowal of scope during prosecution.”
Purdue Pharma L.P. v. Endo Pharms., Inc., 438 F.3d 1123, 1136 (Fed. Cir. 2006); see also
Omega Engineering Inc. v. Rayteck Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003) (finding that
the doctrine of prosecution disclaimer is well established and precludes patentees from
recapturing through claim construction specific meanings disclaimed during prosecution).
A patentee could do so, for example, by clearly characterizing the invention in a way to try
to overcome rejection based on prior art. See, e.g., Microsoft Corp. v. Multi-Tech Sys., Inc.,
357 F.3d 1340, 1349 (Fed. Cir. 2004) (limiting the term “transmitting” to require direct
transmission over telephone lines because the patentee stated during prosecution that the
invention transmits over a standard telephone line, thus disclaiming transmission over a
packet-switch network); Alloc v. Int’l Trade Comm’n, 342 F.3d 1361, 1372 (Fed. Cir. 2003)
(finding that patentee expressly disavowed floor paneling systems without “play” because
the applicant cited the feature during prosecution to overcome prior art); Bell Atl. Network
Servs. v. Covad Commc’ns Group, Inc., 262 F.3d 1258, 1273 (Fed. Cir. 2001) (limiting
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operation of the “transceiver” to the three stated models because of clearly limiting
statements made by the patentee to try to overcome a prior art rejection).
The parties in this case dispute the relevance of the patent’s prosecution history,
particularly the evidentiary status and relevance of the prosecution history for an earlier
corresponding Canadian patent, the ’707 Patent. Weatherford argues that not only does the
Canadian prosecution history of the ’707 Patent constitute intrinsic evidence regarding the
’416 Patent, but that it controls several ’416 Patent claim construction issues. MCT, on the
other hand, argues that the prosecution history for the ’707 Patent is, at best, undisclosed and
irrelevant extrinsic evidence as to the ’416 Patent.
Generally speaking, statements made during prosecution of foreign counterparts to a
domestic patent are irrelevant to claim construction if made in response to patentability
requirements unique to the applicable foreign law. Pfizer, Inc. v. Ranbaxy Labs., 457 F.3d
1284, 1290 (Fed. Cir. 2006); TI Group Auto. Sys. (N. Am.), Inc. v. VDO N. Am. LLC, 375
F.3d 1126, 1136 (Fed. Cir. 2004) (holding that “the varying legal and procedural
requirements for obtaining patent protection in foreign countries might render consideration
of certain types of representations inappropriate” for consideration in a claim construction
analysis of a United States counterpart.) In Abbott Labs. v. Sandoz, Inc., 566 F3d 1282 (Fed.
Cir. 2009), the Federal Circuit noted that,
While statements made during prosecution of a foreign counterpart to a U.S.
patent application have a narrow application to U.S. claim construction, Pfizer
Inc. v. Ranbaxy Labs. Ltd., 457 F.3d 1284, 1290 (Fed. Cir. 2006), in this case
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the JP ’199 application is part of the prosecution history of the ’507 patent
itself. Indeed the ’507 patent claims priority from the JP ’199 application.
Furthermore, the trial court did not rely on attorney argument or amendments
during a foreign prosecution as in Pfizer, but consulted only the contents of the
foreign priority application.
566 F.3d at 1290. Thus, the fact that the prosecution history of the ’707 Patent is “foreign”
does not render it per se irrelevant in the instant proceeding. Rather, its relevance and
usefulness will be determined by the Court if, and as, necessary under the applicable
provisions herein.
The Court has reviewed the United States prosecution history materials provided by
the parties, and has utilized the prosecution history in construing the disputed claims. Where
relevant to construction of a particular claim or term, the prosecution history will be noted.
4.
Extrinsic Evidence
Only if there is still some genuine ambiguity in the claims, after consideration of all
available intrinsic evidence, should a trial court resort to extrinsic evidence, such as expert
witness testimony, dictionary definitions, and legal treatises. See Vitronics, 90 F.3d at 1585.
While extrinsic evidence can shed useful light on the relevant art, it is less significant than
the intrinsic record in determining the legally operative meaning of claim language. Phillips,
415 F.3d at 1317; C.R. Bard, Inc., 388 F.3d at 862. Furthermore, extrinsic evidence may be
used only to aid in the proper understanding of the claims, and may not be used to vary or
contradict the claim language itself. Vitronics, 90 F.3d at 1584. The courts have recognized
that dictionaries and treatises may be especially useful in claim construction. Phillips, 415
19
F.3d at 1317. Specifically, technical dictionaries may enable a court “to better understand
the underlying technology” and the way in which one of skill in the art might use the claim
terms. Vitronics, 90 F.3d at 1584 n.6. Nevertheless, 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. Phillips, 415 F.3d 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 is 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.
III.
ANALYSIS OF CLAIM TERMS
The Court will apply these general principles of claim construction to the terms at
issue here.
A.
Agreed Constructions
The parties have agreed to the following constructions for two additional phrases from
the patent-in-suit:
1.
“elastomer” will be construed as “a rubber polymer, or rubber-like
polymer.” (Docket Entry No. 114, p. 13.)
20
2.
“substantially separate from the interior surface of the tubular
stator housing” will be construed using the plain and ordinary meaning of the term.
(Markman hearing; fax communication to the Court dated September 18, 2012.)
B.
“lowering the temperature in the cryogenic refrigeration unit gradually
to cryogenic levels/gradually lowering the temperature in the cryogenic
refrigeration unit to a cryogenic temperature”
These phrases appear in the independent claims, Claims 1, 4, and 6. Defendant
Weatherford seeks to construe the phrases as requiring lowering the specific temperature
throughout the cryogenic refrigeration unit at 2.5 degrees C per minute or slower to at least
-150 degrees C. Plaintiff MCT, on the other hand, asserts that only certain relevant terms
need be construed, not the phrases as an entirety; as such, MCT contends that the term
“gradually” should be given its plain and ordinary meaning; that “cryogenic levels” should
be construed as “approximately minus 50 degrees or below”; and that “to a cryogenic
temperature” needs no construction, as language in Claim 6 limits the terms to the range of
between minus 150 degrees C and minus 200 degrees C. MCT further contends that the term
“in” needs no construction and should be given its plain and ordinary meaning.
Weatherford’s proposed construction encompasses three specifics: that “in” be
construed as meaning “throughout,” that “gradually” be construed as “at 2.5 degrees C per
minute or slower,” and that “cryogenic temperature” and “cryogenic levels” be construed as
at least minus 150 degrees C. The Court disagrees with Weatherford’s argument that the
term “in” needs construction, and that it should be construed as meaning “throughout.”
21
Neither the claim language, the specifications, nor the prosecution history for the ’416 Patent
support Weatherford’s position that “lowering the temperature in the cryogenic refrigeration
unit” should be construed as “lowering the temperature throughout the cryogenic
refrigeration unit.” The Court further notes that in Claim 4, the patentee references “the
temperatures in the cryogenic refrigeration unit reaching temperatures of between minus 150
degrees celsius and minus 200 degrees celsius.” The use of the plural “temperatures” in this
Claim would negate any construction of the term “in” for Claims 1, 4, and 6 as requiring a
uniform temperature at any point throughout the cryogenic refrigeration unit.2
The Court further disagrees with Weatherford’s suggested construction of the term
“gradually” as “at 2.5 degrees C per minute or slower.” The term “gradually” is a general
qualitative descriptor, while “at 2.5 degrees C per minute or slower” is a specific quantitative
rate. Although the term “gradually” appears in all eleven claims except Claim 2, the actual
quantitative rate of “at 2.5 degrees C per minute” appears only in dependent Claim 9, and
does not include the additional descriptor, “or slower.” Weatherford then turns to the
preferred embodiment of the specification, noting that it states, “In tests proving the concept
the temperature was brought down by 2.5 degrees celsius per minute until minus 196 degrees
celsius, the temperature of liquid nitrogen, was reached,” and that the temperature “was
brought back up at the rate of 2.5 degrees celsius per minute.” However, the embodiment
2
To any extent this Court would look to the prosecution history of the Canadian ’155
Patent, it finds such history unhelpful and not relevant to the pending construction question.
22
further states that, “Although the preferred range of between minus 150 degrees celcius [sic]
to minus 200 degrees celcius [sic] was used in tests, lower cryogenic temperatures may be
used. Some experimentation would be required to determine the optimal temperature and
dwell time.” Moreover, the embodiment notes that, “It will be apparent to one skilled in the
art that modifications may be made to the illustrated embodiment without departing from the
spirit and scope of the invention as hereinafter defined in the Claims.” For these reasons,
neither the embodiment nor the Claims themselves support Weatherford’s proposed
construction of the term “gradually.”
Regardless, Weatherford’s proposed construction runs afoul of well established claim
construction guidelines. A specification often describes very specific embodiments of an
invention, and the Federal Circuit has “repeatedly warned against confining the claims to
those embodiments.” Phillips, 415 F.3d at 1323. Indeed,
To avoid importing limitations from the specification into the claims, it is
important to keep in mind that the purposes of the specification are to teach
and enable those of skill in the art to make and use the invention and to
provide a best mode for doing so. One of the best ways to teach a person of
ordinary skill in the art how to make and use the invention is to provide an
example of how to practice the invention in a particular case. Much of the
time, upon reading the specification in that context, it will become clear
whether the patentee is setting out specific examples of the invention to
accomplish those goals, or whether the patentee instead intends for the claims
and the embodiments in the specification to be strictly coextensive. The
manner in which the patentee uses a term within the specification and claims
usually will make the distinction apparent.
Id. (citations omitted, emphasis added).
23
It is clear from the specification in the instant case that the context indicates that the
patentee contemplated other alternative embodiments to those set forth in the specification.
Notably, the patentee referenced the specified rate in context of “tests proving the concept,”
but added the rate to only one dependent claim. Most significantly, the patentee closed the
specification with the following statement:
It will be apparent to one skilled in the art that modifications may be made to
the illustrated embodiment without departing from the spirit and scope of the
invention as hereinafter defined in the Claims.
Clearly, the preferred embodiment reference to the rate of 2.5 degrees celsius per minute was
not intended by the inventor to constitute the sole method of raising or lowering the
temperature “gradually.” Accordingly, the Court does not accept Weatherford’s proposed
claim construction of the term “gradually” as requiring the raising and lowering of the
temperature at a rate of 2.5 degrees celsius per minute or slower.
“Cryogenic levels” and “cryogenic temperature” are two separate phrases appearing
in different claims. “Cryogenic temperature” appears only in Claim 6. Weatherford agrees
with MCT’s argument that for Claim 6 only, “cryogenic temperature” needs no construction
because the language of that claim actually has an understandable and explicitly stated scope
of -150°C to - 200°C (Docket Entry No. 105, p. 121 n. 11.) The Court agrees with the
parties’ argument, and finds that the term “cryogenic temperature” needs no construction.
“Cryogenic levels” appears in Claims 1 and 4. In Claim 1, the temperature in the
cryogenic refrigeration unit is gradually lowered “to cryogenic levels in order to avoid
24
thermal shock to the tubular stator housing[.]” No specific temperature range is given.
Claim 2, on the other hand, depends from Claim 1, and states, “The method as defined in
claim 1, the tubular metal stator housing being subjected to temperatures between minus 150
degrees celcius [sic] and minus 200 degrees celsius.” In Claim 4, however, the temperature
in the cryogenic refrigeration unit is gradually lowered “to cryogenic levels in order to have
the tubular metal stator housing and the stator shrink at substantially the same rate and avoid
thermal shock,” with the temperatures in the cryogenic refrigeration unit reaching “between
minus 150 degrees celsius and minus 200 degrees celsius.”
Given the differences among these claims, it is clear that “cryogenic levels” cannot
be limited to temperatures between minus 150 degrees C and minus 200 degrees C, as such
a construction would improperly import a dependent claim limit into an independent claim.
Phillips, 415 F.3d at 1314. Moreover, Claim 4 uses the phrase “cryogenic levels” but
subsequently limits temperatures in the cryogenic refrigeration unit to a range “between
minus 150 degrees celsius and minus 200 degrees celsius.” Thus, temperatures between -150
degrees C and -200 degrees C may fall within “cryogenic levels,” but they do not define or
limit “cryogenic levels.”
MCT argues that “cryogenic levels” should be construed as “approximately minus 50
C or below.” In support, MCT references the “Detailed Description of the Preferred
Embodiment” for the ’416 Patent, which states that, “The cryogenic temperature range starts
at approximately minus 50 degrees celsius.” Col. 2:19-20. Weatherford contends that the
25
term should be construed as meaning “minus 150 degrees C or below.”
In support,
Weatherford references the National Institute of Standards and Technology, the National
Bureau of Standards, and “historical Cryogenics references” as holding the traditional
understanding of cryogenic temperatures as minus 150 degrees C or below. (Weatherford’s
Claim Construction Proposals, p. 23.) Weatherford’s argument, however, cannot prevail.
The Court is mindful of the Federal Circuit’s guidance in Phillips that, “[T]he specification
may reveal a special definition given to a claim term by the patentee that differs from the
meaning it would otherwise possess, In such cases, the inventor’s lexicography governs.”
415 F.3d at 1316. Given that the inventor’s definition here differs from the standards
recognized by the institutions cited by Weatherford, the inventor’s lexicography must govern.
Accordingly, the Court construes “cryogenic levels” as “a temperature range starting at
approximately minus 50 degrees celsius.”
C.
“raising the temperature of the tubular stator housing
gradually/gradually raising the temperature of the tubular stator
housing”
These phrases appear in independent Claim 1 and in dependent Claim 8. Weatherford
argues that the phrase should be construed as requiring raising the specific temperature
throughout the tubular stator housing at 2.5 degrees C per minute or slower as part of the
removal process. MCT contends that the term “gradually” should be given its plain and
ordinary meaning; otherwise, it should be construed as “slowly, as opposed to abruptly.”
MCT further proposed that “of” be given its plain and ordinary meaning, and argues that “as
26
part of the removal process” does not appear in any claim and is not a limitation on this claim
term.
The Court has already discussed construction issues surrounding the terms “gradually”
and “in,” and further analysis is unnecessary. The Court determines that the term “of” also
should be given its plain and ordinary meaning, as persons of ordinary skill in the art would
understand the term as written. Neither the specification, claim language, nor prosecution
history evince any meaning other than the plain and ordinary meaning of the term.
D.
“raising the temperature in the cryogenic refrigeration unit gradually to
ambient temperatures”
This phrase appears in independent Claim 4. Weatherford again argues that the phrase
should be construed as requiring raising the specific temperature throughout the cryogenic
refrigeration unit at 2.5 degrees C per minute or slower to room temperature as part of the
removal process. MCT again argues that “gradually” should be given its plain and ordinary
meaning, or that it otherwise be construed as “slowly, as opposed to abruptly.” MCT further
posits that “to ambient temperatures” means “towards ambient temperatures,” “in” should
be given its plain and ordinary meaning, and that “as part of the removal process” does not
appear in any claim and is not a limitation on this claim term.
The Court has already discussed construction of the terms “gradually” and “in,” and
no additional or further discussion or construction is necessary. Both terms are given their
plain and ordinary meaning.
27
The parties disagree whether the term “to” in “to ambient temperatures” refers to a
process of moving towards ambient temperatures or to the point of reaching ambient
temperatures. MCT argues it means a process; Weatherford argues that it means an end
point.
Although the specific phrase or clause presented here pertains to raising the
temperature in the cryogenic refrigeration unit to ambient temperatures, the phrase “to
ambient temperatures” also appears in independent Claim 1 in reference to the temperature
of the tubular stator housing.
MCT supports its argument by noting that “temperatures” is stated in the plural,
negating Weatherford’s contention that “to ambient temperatures” is an end point rather than
a process. Problematic with MCT’s version, however, is that the inventor stated that the
temperature (singular) in the cryogenic refrigeration unit (Claim 4) and tubular stator
housing (Claim 1) is gradually raised to ambient temperatures (plural). Construction wise,
this is no different than the temperature in the unit or housing being lowered to cryogenic
levels, as seen in Claim 1 and Claim 4. In all four instances, a certain “temperature” is being
raised/lowered to “temperatures.”
Accordingly, the Court construes “to ambient
temperatures” as meaning “until ambient temperatures are reached.” 3
3
The Court discusses the phrase “ambient temperatures” in Subpart G, infra.
28
E.
“further comprising the step of gradually lowering/raising/decreasing”
These phrases appear in dependent Claims 7, 8, 9, 10, and 11, which depend from
independent Claim 6. These dependent claims all commence with, “The method of claim 6
further comprising the step of gradually. . .” and state as follows:
7.
The method of claim 6 further comprising the step of gradually
lowering the temperature in the cryogenic refrigeration unit from a
starting temperature of approximately minus 50 degrees celsius.
8.
the method of claim 6 further comprising the steps [sic] of gradually
raising the temperature of the tubular stator housing.
9.
The method of claim 6 further comprising the step of gradually
decreasing the temperature in the refrigeration unit at a rate of
approximately 2.5 degrees celsius per minute.
10.
The method of claim 6 further comprising the step of gradually
decreasing the temperature in the refrigeration unit over a period
of time of approximately 1 hour.
11.
The method of claim 6 further comprising the step of gradually
decreasing the temperature in the refrigeration unit to a
temperature of approximately minus 196 degrees celsius.
Weatherford argues that each of these dependent claims constitutes an additional,
separate step after completion of the steps in Claim 6. MCT, on the other hand, argues that
each of these dependent claims modifies Claim 6 but does not constitute an additional,
separate step from Claim 6. MCT proposes the following constructions for these claims:
Claim 7:
The method of Claim 6 wherein the step of gradually lowering the
temperature in the cryogenic unit to a cryogenic temperature of between
-150 degrees C and -200 degrees C further includes, but is not limited
to a starting temperature of approximately -50 degrees C.
29
Claim 8:
The method of Claim 6 further including but not limited to the step of
gradually raising the temperature of the tubular stator housing.
Claim 9:
The method of Claim 6 wherein the step of gradually lowering the
temperature in the cryogenic unit to a cryogenic temperature of between
-150 degrees C and -200 degrees C further includes, but is not limit to
gradually decreasing the temperature in the refrigeration unit [at] a rate
of approximately 2.5 degrees C per minute.
Claim 10:
The method of Claim 6 wherein the step of gradually lowering the
temperature in the cryogenic unit to a cryogenic temperature of between
-150 degrees C and -200 degrees C further includes, but is not limited
to gradually decreasing the temperature in the refrigeration unit over a
period of time of approximately 1 hour.
Claim 11:
The method of Claim 6 wherein the step of gradually lowering the
temperature in the cryogenic unit to a cryogenic temperature of between
-150 degrees C and -200 degrees C further includes, but is not limited
to gradually decreasing the temperature in the refrigeration unit to a
temperature of approximately -196 degrees C.
In short, MCT argues that “further comprising the step(s) of “ modifies the steps of Claim 6,
while Weatherford contends that the language adds a step to the steps of Claim 6.
In support of its contention, Weatherford cites the federal district court cases of
Remediation Prods., Inc. v. Adventus Ams. Inc., No. 3:07cv153, 2009 WL 57456, at *1
(W.D.N.C. Jan 7, 2009) (“The phrase ‘further comprising,’ standing alone and in light of its
use in a dependent claim context, simply means that the dependent claim adds additional
steps to Claim 1. Accordingly, the phrase ‘further comprising’ means: the dependent claim
includes additional steps.”); Biedermann Motech GmbH v. Acme Spine, LLC, No. 06-3619,
2007 WL 6210841, at *11 (C.D. Cal. Aug. 31, 2007) (“[C]laim 2 uses the phrase ‘further
30
comprising’ which is standard in dependent claims for adding additional elements to a
device.”); Acacia Media Techs. Corp. v. New Destiny Internet Group, No. C-05-01114, 2007
WL 678317, at *13 (N.D. Cal. Mar. 2, 2007) (“The introductory language of Claim 6 uses
the phrase ‘further comprising,’ which means that the elements of Claim 6 are in addition to
those recited in Claim 4.”)
MCT, in support of its own argument, directs the Court to Bright Response, LLC v.
Google Inc., C.A. No. 2:07-cv-371, 2010 WL 2522424, at *11 (E.D. Tex. June 18, 2010).
In Bright Response, the Federal Circuit construed independent claims containing “further
comprising the steps of” as follows:
Claim 28’s preamble contains the transition ‘further comprising the steps of.’
This transition indicates that the steps of the independent claim are
incorporated into the dependent claim. For steps having the same label, e.g.,
both claim 26 and claim 28 have a step “(c),” the step recited in the dependent
claim replaces the step recited in the independent claim. Otherwise, for steps
not having the same label, e.g., step (b) in claim 26 and step (b1) in claim 28,
the step recited in the dependent claim supplements the step recited in the
independent claim. Thus, claim 28 requires the following steps: claim 26’s
step (a), claim 26’s step (b), claim 28’s step (b1), and claim 28’s step (c).
Id., at *11 (emphasis added). Under this approach, a step recited in a dependent claim can
either replace or supplement a step in the independent claim, depending on how the steps
appear in the relevant claims.4 However, the court must also look to 35 U.S.C. § 112, ¶ 4,
4
The various steps of Claims 6 through 11 are not set out as individually-lettered steps as
in Bright Response; nevertheless, the steps are readily discernable.
31
which provides that a claim in dependent form shall be construed to incorporate by reference
all the limitations of the claim to which it refers.
Given these principles espoused by the Federal Circuit, the Court construes dependent
Claim 7 to be the method of Claim 6, with the starting temperature in the cryogenic
refrigeration unit being approximately minus 50 degrees celsius (thus the dependent claim
replaces the independent claim starting temperature); dependent Claim 8 to be the method
of Claim 6, with a supplemental step of gradually raising the temperature of the tubular stator
housing prior to removal of the stator from the housing; dependent Claim 9 to be the method
of Claim 6, with the step “gradually lowering the temperature in the cryogenic refrigeration
unit” being replaced with “gradually decreasing the temperature in the cryogenic
refrigeration unit at a rate of approximately 2.5 degrees celsius per minute”; dependent Claim
10 to be the method of Claim 6, with the step “gradually lowering the temperature in the
cryogenic refrigeration unit” being replaced with “gradually decreasing the temperature in
the refrigeration unit over a period of time of approximately 1 hour”; dependent Claim 11 to
be the method of Claim 6, with the step “gradually lowering the temperature in the cryogenic
refrigeration unit to a cryogenic temperature of between minus 150 degrees celsius and minus
200 degrees celsius” being replaced with “gradually decreasing the temperature in the
refrigeration unit to a temperature of approximately minus 196 degrees celsius.”
32
F.
“gradually”
This term, for the present purpose, appears in the independent claims, Claims 1, 4, and
6. MCT argues that “gradually” should be construed as meaning “in a gradual manner;
making slow progress; slowly, as opposed to abruptly.” Weatherford contends that the term
needs no construction as a separate term, and that previously proposed constructions should
be followed.
Weatherford states that to any extent construction necessary, however,
“gradually” should be construed as requiring “at 2.5 degrees C per minute or slower.”
The Court has already addressed this claim construction issue regarding the term
“gradually,” and no further or independent consideration is necessary.
G.
“ambient temperatures”
This term appears in independent Claims 1 and 4. In its claim construction materials,
MCT argues again that the term “to” in the phrase “to ambient temperatures” needs
construction, but proffers no proposed construction for the underlying terms “ambient” or
“ambient temperatures” themselves. In the parties’ Joint Claims Construction Chart, MCT
does not maintain a need for construction of the phrase “ambient temperatures.” (Docket
Entry No. 114, p. 5.) In its Opening Claim Construction Brief, MCT states that, “Though
‘room temperatures’ works as a direct translation in its singular form appears reasonable
[sic], clearly there is no one temperature required by the claims.” (Docket Entry No. 101, p.
20, emphasis omitted.) Consequently, it appears that MCT does not disagree that “ambient
temperatures” and “room temperatures” have the same meaning.
33
At the Markman hearing, MCT posited that “ambient” has a fairly common and
ordinary meaning, and that “ambient temperatures” refer to the temperature in the
surrounding area. Markman Hearing, p. 29. The ’416 Patent specification, claims, and
prosecution history do not set forth any particular location or type of location for application
or use of the patent method and, as noted by MCT, the process could be carried on outdoors.
Id.
Accordingly, the Court does not construe “ambient temperatures” as “room
temperatures,” as such construction might inadvertently limit the scope of the process to
indoor use, a limitation not appearing within the intrinsic evidence. Nor does the Court
construe the phrase as meaning any particular single temperature, as the phrase is
unambiguously stated in the plural.
The Court agrees with MCT that the phrase “ambient temperatures” needs no
construction, as it has a plain and ordinary meaning that would be understood by a person of
ordinary skill in the art.
H.
“the temperature in the cryogenic refrigeration unit”
This phrase appears in the independent claims, Claims 1, 4, and 6. MCT contends that
“in” should be given its plain and ordinary meaning; Weatherford contends that the phrase
should be construed as referring to the specific temperature throughout the cryogenic
refrigeration unit.
34
The Court has already addressed this claim construction issue regarding the term “in,”
and no further or independent consideration is necessary. “In” shall be given its plain and
ordinary meaning.
I.
“cryogenic refrigeration unit”
This phrase appears in the independent claims, Claims 1, 4, and 6. MCT argues that
the phrase should be construed as “a refrigeration unit capable of reaching temperatures of
approximately -50 degrees C or below.” Weatherford argues that it should be construed as
“a refrigerator for controlled cooling of objects to cryogenic temperatures without immersing
the objects in a liquid cryogen.”
In support of its position, Weatherford argues that the prosecution history clearly
shows how the inventor disavowed any process for immersing the objects in liquid nitrogen,
in that the inventor stated as follows:
Combining the teaching of this reference with the moineau-style stator of the
current application is a prescription for disaster. The Applicant is perfectly
content to disclaim any immersing technique under the doctrine of file
wrapper estoppel. Immersing the moineau-style stator of the current
application, as taught in the method of Waldsmith ’159, leads directly to stator
housing failure, in the form of one or more of distortion, thermal shock or
micro-cracking. It is respectfully submitted that as soon as one immerses a
component into liquid nitrogen, it is rapidly lowered to the temperature of the
bath into which it is immersed. It is respectfully submitted that it is not taught
to lower the temperature of the component in a controlled manner, as
currently claimed, using the immersion technique as proposed by Waldsmith
’159.
35
Contrary to Weatherford’s position, this statement does not constitute a clear and
unequivocal disclaimer or disavowal of any and all techniques for the immersion of stators
in a liquid cryogen, particularly liquid nitrogen. Rather, the inventor’s disavowal was of an
uncontrolled immersion of stators into liquids already cooled to cryogenic levels: “as soon
as one immerses a component into liquid nitrogen, it is rapidly lowered to the temperature
of the bath into which it is immersed.” It was this process that the inventor labeled “a
prescription for disaster.” The inventor instead sought to utilize a technique for lowering the
temperature in the refrigeration unit within which the stator had already been placed, such
that the stator’s cooling was neither rapid nor uncontrolled. This can be seen in the following
statement made by MCT’s prosecuting attorney:
Q:
Do you consider the language, ‘The applicant is perfectly content to
disclaim any immersing technique under the doctrine of file wrapper
estoppel,’ to be a clear disavowal of the scope of immersing techniques
from the subject matter of the U.S. claims?
A:
Yes. Later on, we say look, we have to lower the temperature of the
component in a controlled manner, so as soon as you go and you rapidly
immerse something in, where is your control?
This is further evinced by the inventor’s own statements that his process claimed
controlled cooling, not uncontrolled rapid cooling:
Furthermore, Waldsmith ’159 teaches a process of cooling the component by
immersing it into liquid nitrogen for a period of ‘about five minutes.’ As
noted above such uncontrolled rapid cooling would cause damage to the
moineau-style stator. In contrast, the current application claims that the
moineau-style stator is cooled in a controlled manner over a specific period of
time.
36
Thus, the inventor’s disavowal was limited to a process of immersing a stator into a
bath of liquid nitrogen already at cryogenic temperatures, in a rapid and uncontrolled manner.
Weatherford, however, unnecessarily and improperly attempts to bootstrap this disclaimer
of a specific process into its proposed construction of the term, “cryogenic refrigeration
unit.” By arguing that a cryogenic refrigeration unit should be construed as a refrigerator for
controlled cooling of objects to cryogenic temperatures, Weatherford subverts the inventor’s
language, which calls for the gradual lowering of the temperature in the cryogenic
refrigeration unit to cryogenic levels but the raising of the temperature of the stators (the
objects).
It is clear to this Court that the phrase “cryogenic refrigeration unit” should be
construed as “a refrigeration unit capable of reaching temperatures of approximately -50
degrees C or below.”
J.
“the temperatures in the cryogenic refrigeration unit reaching
temperatures of between minus 150 degrees celcius [sic] and minus 200
degrees celcius [sic]”
This phrase appears in Claim 4. MCT contends that “in” should be given its plain and
ordinary meaning. Weatherford argues that it should be construed as requiring that the
temperature throughout the cryogenic refrigeration unit range from -150 degrees C to -200
degrees C.
37
The Court has already addressed this claim construction issue regarding the term “in,”
and no further or independent consideration is necessary. “In” shall be given its plain and
ordinary meaning.
K.
“cryogenic levels”
The phrase “cryogenic levels” appears in Claims 1 and 4. MCT posits that the phrase
means “approximately -50 degrees C or below,” while Weatherford contends that it means
“a temperature of -150 degrees C or lower.”
The Court has already addressed this claim construction issue regarding the phrase
“cryogenic levels,” and no further or independent consideration is necessary.
L.
“in order to avoid thermal shock to the tubular stator housing/to avoid
thermal shock to at least the metal tubular stator housing”
This phrase appears in Claims 1, 4, and 6. Weatherford argues that the phrase
represents an affirmative or deliberate step or act to prevent thermal shock, and should be
construed as a claim limitation. MCT argues that the phrase is not a claim limitation, but
rather, sets forth the purpose or result of gradually lowering the temperature.
The ’416 Patent provides, in relevant part, as follows:
The Detailed Description of the Preferred Embodiment:
In order to avoid thermal shock, the temperature of [the] tubular stator housing
must be gradually brought down into the cryogenic range and then gradually
brought back up.
Claim 1:
lowering the temperature in the cryogenic refrigeration unit gradually
to cryogenic levels in order to avoid thermal shock to the tubular stator
housing[.]
38
Claim 4:
lowering the temperature in the cryogenic refrigeration unit gradually
to cryogenic levels in order to have the tubular metal stator housing and
the stator shrink at substantially the same rate and avoid thermal
shock[;]. . . raising the temperature in the cryogenic refrigeration unit
gradually to ambient temperatures in order to avoid thermal shock[.]
Claim 6:
gradually lowering the temperature in the cryogenic refrigeration unit
to a cryogenic temperature . . . so as to avoid thermal shock to at least
the metal tubular stator housing and cause the metal tubular stator
housing and the stator to shrink at substantially a same rate[.]
In arguing that the phrase should be construed as a claim limitation, Weatherford
directs the Court to Federal Circuit case law construing functional and “whereby” language
in a claim as functional claim limitation language. Hoffer v. Microsoft Corp., 405 F.3d 1326,
1329 (Fed. Cir. 2005) (“It is correct that a ‘whereby’ clause generally states the result of the
patent process. However, when the ‘whereby’ clause states a condition that is material to
patentability, it cannot be ignored in order to change the substance of the invention.”); K-2
Corp. v. Salomon S.A., 191 F.3d 1356, 1363 (Fed. Cir. 1999) (“The functional language is,
of course, an additional limitation in the claim.”). Other Federal Circuit cases, however, have
held such language not to constitute a claim limitation. See, e.g., Minton v. National Ass’n
of Securities Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003) (holding that “whereby”
clause in method for trading securities did not constitute a claim limitation). However, as
there is no “whereby” clause in the ’416 Patent, the potential construction of such a clause
is of no moment.
39
The Court is not persuaded by Weatherford’s position that thermal stress avoidance
“is, in fact, the very essence of Millennium’s claimed process and ignoring it would be
‘contrary to the fundamental invention.’” (Docket Entry No. 105, p. 45.) While the patented
process undeniably calls for the gradual lowering and raising of temperatures in order to
avoid thermal shock to the tubular housing, the claims do not teach methods of thermal shock
prevention. See, e.g., In re Omeprazole Patent Litig., 536 F.3d 1361, 1370 (Fed. Cir. 2008)
(refusing to read in a limitation where the term “enhanced stability” only referred to the
intended result of the invention).
Construing the patent and claims language as a whole, the Court finds that the phrase,
“in order to avoid thermal shock to the tubular stator housing/to avoid thermal shock to at
least the metal tubular stator housing,” needs no further construction and should not be
construed as a claim limitation.
M.
“thermal shock”
In the Joint Claim Construction Chart, and prior to the Markman hearing, MCT
proposed the following construction of “thermal shock”:
This is not a claim limitation, but is the purpose or result to be avoided by
gradually lowering the temperature. Alternatively, and potentially the subject
of expert testimony, ‘thermal shock’ is change to the metallic structure of the
tubular stator housing that can result in failure of the housing when in use.
(Docket Entry No. 114, pp. 24–25, p. 9.) In its subsequent Claim Construction Hearing brief,
however, MCT contends that “thermal shock” should be construed as “a sudden temperature
40
change affecting the metallic structure of the tubular stator housing that can result in failure
of the housing, which either immediately occurs or occurs in use.” (Claim Construction
Hearing brief, p. 34.)
Weatherford contends that the phrase should be construed as referring to destructive
cracking or bending caused by a change in temperature. (Docket Entry No. 114, p. 9.)
The term “thermal shock” appears in the following claims and specification
provisions:
Detailed Description of the Preferred Embodiment:
“In order to avoid thermal shock, the temperature of tubular stator
housing must be gradually brought down into the cryogenic range and
then gradually brought back up.”
Claim 1:
“lowering the temperature in the cryogenic refrigeration unit gradually
to cryogenic levels in order to avoid thermal shock to the tubular stator
housing”
Claim 4:
“lowering the temperature in the cryogenic refrigeration unit gradually
to cryogenic levels in order to have the tubular metal stator housing and
the stator shrink at substantially the same rate and avoid thermal shock”
“raising the temperature in the cryogenic refrigeration unit gradually to
ambient temperatures in order to avoid thermal shock”
Claim 6:
“gradually lowering the temperature in the cryogenic refrigeration unit
to a cryogenic temperature of between minus 150 degrees celsius and
minus 200 degrees celsius so as to avoid thermal shock to at least the
metal tubular stator housing and cause the metal tubular stator housing
and the stator to shrink at substantially a same rate”
If any substantive difference can be seen between the two (final) proposed
constructions, it is that MCT’s proposed construction recognizes thermal shock as a process,
41
while Weatherford’s proposal defines thermal shock as destructive changes resulting from
a temperature change. In short, MCT’s proposal is a cause, Weatherford’s proposal a result.
Neither of the proposed constructions finds support within the intrinsic evidence
presently before the Court, as the inventor uses the term without reference or explanation.
Rather, based on the intrinsic evidence and the extrinsic evidence presented at the Markman
hearing, the Court finds that the term “thermal shock” needs no construction in that a person
of ordinary skill in the art would understand the meaning of the term.
N.
“the stator shrinking and pulling away from the interior surface of the
tubular stator housing as the temperature is gradually lowered and then
gradually raised”
This phrase appears in Claims 1 and 4. According to MCT, the phrase should be
construed as “the stator shrinking and pulling away from the interior surface of the tubular
stator housing as the temperature is gradually lowered, followed by the temperature being
gradually raised.” Weatherford contends the phrase means that ‘the stator shrinks as the
temperature is gradually lowered to the cryogenic temperature and then pulls away from the
interior surface of the tubular stator housing as the temperature is gradually raised to room
temperature.”
Stated succinctly, the parties dispute at what point, if any, the shrinking and pulling
away and/or separation from the stator housing occurs during the claim process. MCT argues
that the shrinking and pulling away occurs during the gradual lowering of the temperature;
Weatherford argues that it occurs as a result of the lowering and raising of the temperatures.
42
A review of the specification is helpful at this point. In the “Summary of the
Invention,” the inventor states as follows:
According to the present invention there is provided a method of removing
stators from tubular stator housings, involving subjecting a tubular stator
housing having an interior surface to which a worn stator is adhered by
adhesive to cryogenic refrigeration until the stator shrinks and pulls away
from the interior surface of the tubular stator housing.
That is, the method is described as “subjecting a tubular stator housing . . . to cryogenic
refrigeration until the stator shrinks and pulls away” from the housing. This is further seen
in the following excerpts from the “Detailed Description of the Preferred Embodiment,”
wherein the inventor states that:
the preferred method involves subjecting a tubular stator housing . . . to
cryogenic refrigeration until the stator shrinks and pulls away from [the]
interior surface of [the] tubular stator housing.
As the temperature is made colder within the cryogenic temperature range, the
less time it takes for the worn stator to shrink sufficiently to pull away from the
interior surface. . .
Once [the] worn stator separated from [the] tubular stator housing, the
temperature was brought back up. . .
In each of these instances, the method described the shrinking and pulling away and/or
separation occurring as a result of the cryogenic refrigeration. Indeed, the inventor noted a
direct correlation between colder cryogenic temperatures and the speed of the shrinking for
pulling away. Following the stator’s separation from the stator housing, the temperature was
then brought back up.
43
Moreover, reference should be made to the language of Claim 6, which states that the
separation occurs during the lowering of the temperature: “allowing the stator, at the
cryogenic temperature, to substantially separate from the interior surface of the tubular stator
housing during the gradually lowering the temperature in the cryogenic refrigeration unit[.]”
Claim 6 also calls for “removing the stator from the housing following the gradually
lowering the temperature in the cryogenic refrigeration unit.”
Construing the patent specification and claims as a whole, it is clear to the Court that
the inventor’s method provided for the shrinking and pulling away and/or separation of the
stator from the stator housing to occur as a result of, or during, the cryogenic refrigeration
at cryogenic levels. Accordingly, the Court agrees with MCT’s position and construes the
terms of the phrase, “the stator shrinking and pulling away from the interior surface of the
tubular stator housing as the temperature is gradually lowered and then gradually raised,” as
“the stator shrinking and pulling away from the interior surface of the tubular stator housing
as the temperature is gradually lowered, followed by the temperature being gradually raised.”
O.
“allowing the stator, at the cryogenic temperature, to substantially
separate from the interior surface of the tubular stator housing during the
gradually lowering the temperature in the cryogenic refrigeration unit”
This phrase appears in Claim 6. MCT argues that the phrase should be given its plain
and ordinary meaning. Weatherford contends that the terminology is internally inconsistent
and indefinite and cannot be logically construed. Weatherford argues in the alternative that
the phrase is a limitation that should be construed as “allowing the stator, at -150 degrees C
44
to -200 degrees C, to substantially separate from the interior surface of the tubular stator
housing during the lowering of the temperature throughout the cryogenic refrigeration unit
by 2.5 degrees C per minute or slower to -150 degrees C to -200 degrees C.”
Weatherford contends that the phrase and terms are internally inconsistent without a
possible logical construction because the temperature in the cryogenic refrigeration unit
cannot be lowered to the cryogenic temperature if the stator and housing are already at the
cryogenic temperature prior to separation. Reviewing the disputed phrase and terms in
context of the claim as a whole, however, shows that the claim is internally consistent and
subject to a logical construction:
placing the metal tubular stator housing, having the stator adhesively adhered
to the interior surface of the stator housing, into a cryogenic refrigeration unit;
gradually lowering the temperature in the cryogenic refrigeration unit to a
cryogenic temperature of between minus 150 degrees celsius and minus 200
degrees celsius so as to avoid thermal shock to at least the metal tubular stator
housing and cause the metal tubular stator housing and the stator to shrink at
substantially a same rate;
allowing the stator, at the cryogenic temperature, to substantially separate from
the interior surface of the tubular stator housing during the gradually lowering
the temperature in the cryogenic refrigeration unit; and
removing the stator from the housing following the gradually lowering the
temperature in the cryogenic refrigeration unit.
The relevant provisions of this claim provide as follows:
placing the metal tubular stator housing [with interior stator] . . . into a
cryogenic refrigeration unit; gradually lowering the temperature in the
cryogenic refrigeration unit to a cryogenic temperature of between minus 150
45
degrees celsius and minus 200 degrees celsius so as to . . . cause the metal
tubular stator housing and the stator to shrink at substantially a same rate;
allowing the stator, at the cryogenic temperature, to substantially separate from
. . . the tubular stator housing during the gradually lowering the temperature
in the cryogenic refrigeration unit[.]
Although the phrasing of the claim arguably suffers from one or more grammatical
irregularities, the terms and steps of the claim are not invalid or indefinite. Absolute clarity
is not a necessity; only claims not amenable to construction or that are insolubly ambiguous
are to be held indefinite. Datamize, 417 F.3d at 1347.
Further, Weatherford’s alternative proposed construction is premised upon arguments
that have already been declined by the Court. For instance, the Court has not construed the
term “gradually” as meaning “at the rate of 2.5 degrees C per minute or slower,” nor has it
construed the term “in” as “throughout.”
The Court finds that no further construction of the phrase is necessary beyond those
constructions of terms within the phrase already made by the Court.
P.
“removing the stator from the housing”
This phrase appears in Claim 6. MCT posits that the term “removing” should be
given its plain and ordinary meaning. Weatherford argues that the phrase should be
construed as meaning “removing the stator from the housing in a comparatively clean
fashion, thereby reducing the reaming and post reaming preparation of the interior surface
of the housing.”
46
Weatherford’s proposed construction language can be found in the “Summary of the
Invention,” which states as follows:
The method, as described above, provides an alternative to the use of rams.
More importantly, it removes the worn stator in a comparably clean fashion
thereby reducing the reaming and post reaming preparation of the interior
surface of the tubular stator housing. Reducing reaming and post reaming
preparation provides a substantial savings.
The actual claim language, however, states “and removing the stator from the housing
following the gradually lowering the temperature in the cryogenic refrigeration unit.” The
claim language does not specify any particular condition of the housing following removal,
nor does it specify what actions are to be taken or not taken following removal. In short,
Weatherford’s proposed construction attempts to import limitations from the specification
into the claim, which is contrary to well settled claim construction principles espoused by the
Federal Circuit. See Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1370 (Fed. Cir.
2008); Phillips, 415 F.3d 1303, 1320–23 (Fed. Cir. 2005); Innova/Pure Water, Inc., 381 F.3d
1111, 1117 (Fed. Cir. 2004).
The Court finds that the phrase “removing the stator from the housing” needs no
construction and should be given its plain and ordinary meaning.
47
IV. CONCLUSION
In accordance with the analysis set forth in this Memorandum, the Court hereby
construes the phrases from the patent-in-suit as follows:
C LAIM T ERM, P HRASE, OR C LAUSE
C OURT’S C ONSTRUCTION
No construction of “in” needed; plain and
ordinary meaning
“lowering the temperature in the
cryogenic refrigeration unit gradually
to cryogenic levels /gradually lowering
the temperature in the cryogenic
refrigeration unit to a cryogenic
temperature”
No construction of “cryogenic
temperature” needed; is construed within
the claim.
No construction of “gradually” needed;
plain and ordinary meaning
“cryogenic levels” is construed as “a
temperature range starting at
approximately minus 50 degrees celsius.”
“raising the temperature of the tubular
stator housing gradually/gradually
raising the temperature of the tubular
stator housing”
No construction of “of” needed; plain and
ordinary meaning
“raising the temperature in the
cryogenic refrigeration unit gradually
to ambient temperatures”
No construction of “in” needed; plain and
ordinary meaning
No construction of “gradually” needed;
plain and ordinary meaning
“to ambient temperatures” is construed as
“until ambient temperatures are reached”
48
dependent Claim 7 to be the method of
Claim 6, with the starting temperature in
the cryogenic refrigeration unit being
approximately minus 50 degrees celsius
(thus the dependent claim replaces the
independent claim starting temperature);
“further comprising the step of
gradually lowering/raising/decreasing”
dependent Claim 8 to be the method of
Claim 6, with a supplemental step of
gradually raising the temperature of the
tubular stator housing prior to removal of
the stator from the housing;
dependent Claim 9 to be the method of
Claim 6, with the step “gradually lowering
the temperature in the cryogenic
refrigeration unit” being replaced with
“gradually decreasing the temperature in
the cryogenic refrigeration unit at a rate of
approximately 2.5 degrees celsius per
minute”;
dependent Claim 10 to be the method of
Claim 6, with the step “gradually lowering
the temperature in the cryogenic
refrigeration unit” being replaced with
“gradually decreasing the temperature in
the refrigeration unit over a period of time
of approximately 1 hour”;
dependent Claim 11 to be the method of
Claim 6, with the step “gradually lowering
the temperature in the cryogenic
refrigeration unit to a cryogenic
temperature of between minus 150
degrees celsius and minus 200 degrees
celsius” being replaced with “gradually
decreasing the temperature in the
refrigeration unit to a temperature of
49
“gradually”
No construction of “gradually” needed;
plain and ordinary meaning
“ambient temperatures”
No construction of “ambient
temperatures” needed; plain and ordinary
meaning
“the temperature in the cryogenic
refrigeration unit”
No construction of “in” needed; plain and
ordinary meaning
“cryogenic refrigeration unit”
“a refrigeration unit capable of reaching
temperatures of approximately -50 degrees
C or below.”
“the temperatures in the cryogenic
refrigeration unit reaching
temperatures of between minus 150
degrees celcius [sic] and minus 200
degrees celcius [sic]”
No construction of “in” needed; plain and
ordinary meaning
“cryogenic levels”
“a temperature range starting at
approximately minus 50 degrees celsius.”
“in order to avoid thermal shock to the
tubular stator housing/to avoid thermal
shock to at least the metal tubular
stator housing”
No construction needed; plain and
ordinary meaning
“thermal shock”
No construction needed; plain and
ordinary meaning
“the stator shrinking and pulling away
from the interior surface of the tubular
stator housing as the temperature is
gradually lowered and then gradually
raised”
“the stator shrinking and pulling away
from the interior surface of the tubular
stator housing as the temperature is
gradually lowered, followed by the
temperature being gradually raised.”
No construction as a claim limitation
50
No construction of “in” needed; plain and
ordinary meaning
“allowing the stator, at the cryogenic
temperature, to substantially separate
from the interior surface of the tubular
stator housing during the gradually
lowering the temperature in the
cryogenic refrigeration unit”
No construction of “gradually” needed;
plain and ordinary meaning
cryogenic refrigeration unit: “a
refrigeration unit capable of reaching
temperatures of approximately -50 degrees
C or below.”
cryogenic temperature:
“removing the stator from the housing”
No construction needed; plain and
ordinary meaning of the terms
“elastomer”
“a rubber polymer, or rubber-like
polymer”
“substantially separate from the
interior surface of the tubular stator
housing”
No construction needed; plain and
ordinary meaning of the terms
Signed at Houston, Texas, on this the 14th day of June, 2013.
KEITH P. ELLISON
UNITED STATES DISTRICT JUDGE
51
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