DeNora Water Technologies Texas, LLC et al v. H20, L.L.C.
Filing
62
MEMORANDUM AND ORDER on Claim Construction. (Signed by Judge Nancy F Atlas) Parties notified.(TDR, 4)
United States District Court
Southern District of Texas
ENTERED
IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF TEXAS
HOUSTON DIVISION
DE NORA WATER TECHNOLOGIES §
TEXAS, LLC,
§
Plaintiff,
§
§
v.
§
§
H2O, LLC,
§
Defendant.
§
January 16, 2019
David J. Bradley, Clerk
CIVIL ACTION NO. H-17-2530
MEMORANDUM AND ORDER ON CLAIM CONSTRUCTION
This patent case is before the Court for construction of the disputed claim terms
in United States Patent No. 6,379,525 (“the ’525 Patent”), entitled “Enhanced
Electrolyzer” (the “Patent-in-Suit”). Plaintiff DeNora Water Technologies Texas,
LLC (“DeNora”) is the current owner of the Patent-in-Suit. DeNora alleges that
Defendant H2O, LLC (“H2O”) is infringing the ’525 Patent.
The Court conducted a hearing pursuant to Markman v. Westview Instruments,
Inc., 517 U.S. 370 (1996) (“Markman hearing”), on January 10, 2019. At the time of
the Markman hearing, the parties had agreed on the proper construction of all but three
related claim terms involving an opening within the periphery of either the housing
or the middle casing. Based on the evidence before the Court, the arguments
presented by counsel, and the governing legal authorities, the Court issues this
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Memorandum and Order construing those disputed claim terms that require
construction.
I.
BACKGROUND
Electrolysis uses direct electrical current to cause a chemical reaction, and an
electrolyzer is a device in which electrolysis is performed. See Technology Tutorial
[Doc. # 54], p. 4. The ’525 Patent covers “bookcell electrolyzers” such as those used
in marine sanitation systems. See id. at 5. In marine sanitation systems, a wastewater
and seawater mixture is pumped into the bookcell electrolyzer, where it flows between
a series of electrodes. See id. The application of electric current to the mixture causes
the sodium chloride in the seawater to decompose into sodium hypochlorite, which
is essentially bleach. See id. The hypochlorite disinfects the wastewater so it can be
safely discharged into the ocean. See id.
DeNora and H2O both manufacture and sell marine sanitation systems utilizing
bookcell electrolyzers. See id. at 7. DeNora alleges that H2O’s system infringes the
’525 Patent.
Prior to the Markman hearing, DeNora filed its Claim Construction Brief [Doc.
# 43], H2O filed its Responsive Claim Construction Brief [Doc. # 44], and DeNora
filed a Reply Brief on Claim Construction [Doc. # 46]. Additionally, the parties filed
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a joint Technology Tutorial [Doc. # 54] and a final Joint Claim Construction Chart
[Doc. # 60]. The Court now issues its claim construction ruling.
II.
GENERAL LEGAL STANDARDS FOR 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.” Aventis Pharm., Inc.
v. Amino Chems. Ltd., 715 F.3d 1363, 1373 (Fed. Cir. 2013) (quoting Phillips v. AWH
Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)). The patent claims in issue
must be construed as a matter of law to determine their scope and meaning. See, e.g.,
Markman v. Westview Instruments, Inc., 517 U.S. 370, 390 (1996), aff’g, 52 F.3d 967,
976 (Fed. Cir.) (en banc); Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d
1295, 1317 (Fed. Cir. 2007).
“There is a heavy presumption that claim terms are to be given their ordinary
and customary meaning.” Aventis, 715 F.3d at 1373 (citing Phillips, 415 F.3d at
1312-13; Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).
Therefore, Courts must “look to the words of the claims themselves . . . to define the
scope of the patented invention.” Id. (citations omitted); see also Summit 6, LLC v.
Samsung Elec. Co., Ltd., 802 F.3d 1283, 1290 (Fed. Cir. 2015). The “ordinary and
customary meaning of a claim term is the meaning that the term would have to a
person of ordinary skill in the art in question at the time of the invention, i.e., as of the
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effective filing date of the patent application.” Phillips, 415 F.3d at 1313; see also
ICU Med., Inc. v. Alaris Med. Sys., Inc., 558 F.3d 1368, 1374 (Fed. Cir. 2009). This
“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.” Phillips, 415 F.3d at 1313; ICU, 558
F.3d at 1374.
Intrinsic evidence is the primary resource for claim construction. See PowerOne, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1348 (Fed. Cir. 2010) (citing
Phillips, 415 F.3d at 1312). For certain claim terms, “the ordinary meaning of claim
language as understood by a person of skill in the art may be readily apparent even to
lay judges, and claim construction in such cases involves little more than the
application of the widely accepted meaning of commonly understood words.”
Phillips, 415 F.3d at 1314. For other claim terms, however, the meaning of the claim
language may be less apparent. To construe those terms, the Court considers “those
sources available to the public that show what a person of skill in the art would have
understood disputed claim language to mean . . . [including] the words of the claims
themselves, the remainder of the specification, the prosecution history, and extrinsic
evidence concerning relevant scientific principles, the meaning of technical terms, and
the state of the art.” Id.
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The claims “provide substantial guidance as to the meaning of particular claim
terms.” Id. The Court may consider the context in which the terms are used and the
differences among the claims. See id. “Because claim terms are normally used
consistently throughout the patent, the usage of a term in one claim can often
illuminate the meaning of the same term in other claims.” Id. Because the claims “are
part of a fully integrated written instrument,” the Court may also consider the
specification and the patent’s prosecution history. Id. at 1315, 1317. When the claims
use separate terms, “each term is presumed to have a distinct meaning.” Primos, Inc.
v. Hunter’s Specialties, Inc., 451 F.3d 841, 847 (Fed. Cir. 2006).
III.
CONSTRUCTION OF DISPUTED CLAIM TERMS
Claim 1 of the ’525 Patent includes the claim term “at least two sections in the
fluid flow passageway, which are connected by one or more openings, wherein each
of said openings are within the periphery of the housing.” Claim 14 contains the
related claim term “at least two sections connected by an opening within the periphery
of the housing.” Claim 8 contains related claim terms “at least two sections in the first
fluid flow passageway, which are connected by one or more openings within the
periphery of the middle casing” and “at least two sections in the second fluid flow
passageway, which are connected by one or more openings within the periphery of the
middle casing.”
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The parties dispute the proper construction of these claim terms.1 Specifically,
the parties dispute whether the connection provided by the opening must be within the
periphery of the housing [middle casing], or whether only the opening itself must be
located within the relevant periphery. Stated differently, the parties dispute whether
the opening forms the entire connection such that they are the same element.
A.
Clear Language of Claim Terms
“A claim must be read in accordance with the precepts of English grammar.”
In re Hyatt, 708 F.2d 712, 714 (Fed. Cir. 1983); Kruse Tech. P’ship v. Volkswagen
AG, 544 F. App’x 943, 949 (Fed. Cir. 2013). The language of the disputed claim
terms in the ’525 Patent clearly state a limitation that only the openings are required
to be within the periphery of the housing [middle casing]. Claim 1 states that the
sections of the fluid flow passageway are connected by openings “wherein each of
said openings are within the periphery of the housing.” Similarly, Claims 8 and 14
describe sections connected by “an opening within the periphery of the housing”
(Claim 14) and passageways connected by “openings within the periphery of the
middle casing” (Claim 8). The clear language in the claims of the ’525 Patent would
1
The parties agree that the claim term “within the periphery of the housing” is properly
construed to mean “within an area close to the edge of the housing” and that the claim
term “opening” is construed to mean “a three-dimensional hole.” See Joint Claim
Construction Chart [Doc. # 60], p. 4.
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be readily understood by a person of ordinary skill in the art to mean that the claim
limitations require only that the opening(s) be within the periphery of the housing or
middle casing.
B.
Specifications and Figures
H2O argues that the claim terms should not be given their ordinary and
customary meaning. H2O notes that the specifications and drawings, specifically
Figure 4, suggest that the openings form the entire connection between the sections
of the fluid flow passageway.
The specifications and drawings do not, however,
demonstrate that the claims require that both the openings and the connection be
within the periphery of the housing or middle casing. Indeed, H2O admits that its
proposed construction would not cover the electrolyzer shown in Figure 10 of the ’525
Patent.
C.
Prosecution History
H2O argues also that its proposed construction is supported by the prosecution
history, specifically a remark in connection with the Patent Examiner’s rejection of
Claims 1, 8 and 14 as originally drafted. In the remarks, which referred to all three
claims, the patent applicant stated that in its invention, “the divider extends only
partially along the length of the plate, thereby leaving the opening connecting the two
sections of the fluid flow passageway within the periphery.” See Remarks, Exh. B to
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Claim Construction Brief [Doc. # 43], p. 9. H2O argues that the public has a right to
rely on statements made during the prosecution of the patent, citing Schwing GmbH
v. Putzmeister Aktiengesellschaft, 305 F.3d 1318, 1324 (Fed. Cir. 2002), and Digital
Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1347 (Fed. Cir. 1998). Although H2O
states that it is not relying on doctrines of prosecution disclaimer or prosecution
estoppel, its arguments are akin to prosecution disclaimer principles.
“Although prosecution history can be a useful tool for interpreting claim terms,
it cannot be used to limit the scope of a claim unless the applicant took a position
before the PTO that would lead a competitor to believe that the applicant had
disavowed coverage of the relevant subject matter.” Schwing, 305 F.3d at 1324. The
statements made during patent prosecution must have narrowed the claims “with
reasonable clarity and deliberateness.” Id. (quoting N. Telecom Ltd. v. Samsung Elecs.
Co., 215 F.3d 1281, 1294 (Fed. Cir. 2000); see also Avid Tech., Inc. v. Harmonic, Inc.,
812 F.3d 1040, 1045 (Fed. Cir. 2016) (stating that the party asserting a prosecution
disclaimer argument must demonstrate that the statements were both clear and
unmistakable); IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1439 (Fed.
Cir. 2000) (holding that a patentee’s statements during prosecution and reexamination
did not constitute clear disavowal of claim scope). Indeed, if the alleged disavowal
“is ambiguous, or even ‘amenable to multiple reasonable interpretations,’” prosecution
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history disclaimer does not apply. See Avid, 812 F.3d at 1045 (quoting Cordis Corp.
v. Medtronic AVE, Inc., 339 F.3d 1352, 1359 (Fed. Cir. 2003)).
In this case, the remark on which H2O relies was not a clear and unmistakable
statement that the openings form the entire connection between the fluid flow
passageways or that the connection itself must be within the periphery of the housing
(or the middle casing). Instead, the remark compares prior art – where “the only
opening which may exist is on the edge of the two plates” – with the claimed
invention, where the “divider extends only partially along the length of the plate,
thereby leaving the opening connecting the two sections . . . within the periphery.”
See Remarks [Doc. # 43-3], p. 9. The statement, in context, does not rise to the level
of a clear and unmistakable disclaimer. See, e.g., Mass. Inst. of Tech. v. Shire Pharm.,
Inc., 829 F.3d 1111, 1120 (Fed. Cir. 2016); Ecolab, Inc. v. FMC Corp., 569 F.3d
1335, 1342 (Fed. Cir. 2009).
D.
Proper Construction
The Court construes the claim term in Claim 1 of the ’525 Patent “at least two
sections in the fluid flow passageway, which are connected by one or more openings,
wherein each of said openings are within the periphery of the housing” according to
its ordinary meaning. Thus, in Claim 1, the opening must be within the periphery of
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the housing. This claim term allows, but does not require, that the connection be
located within the periphery of the housing.
The Court construes Claim 14’s claim term “at least two sections connected by
an opening within the periphery of the housing” as having its ordinary meaning. As
with Claim 1, the Court construes the claim term to allow, but not require, that the
connection be located within the periphery of the housing.
The Court construes the claim terms in Claim 8 “at least two sections in the first
fluid flow passageway, which are connected by one or more openings within the
periphery of the middle casing” and “at least two sections in the second fluid flow
passageway, which are connected by one or more openings within the periphery of the
middle casing” to have their ordinary meaning. The Court construes these claim terms
to allow, but not require, that the connection be located within the periphery of the
middle casing.
IV.
CONCLUSION
The Court has considered the intrinsic evidence in the record, as well as the
parties’ oral arguments and explanations during the Markman hearing. Based on this
consideration of the evidence and the parties’ arguments, as well as the application of
governing claim construction principles, the Court construes the disputed terms in the
Patent-in-Suit as set forth above.
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It is SO ORDERED.
SIGNED at Houston, Texas, this 16th day of January, 2019.
NAN Y F. ATLAS
SENIOR UNI
STATES DISTRICT JUDGE
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