EcoNova v. DPS Utah et al

Filing 109

ORDER AND MEMORANDUM DECISION re Markman Claim Constructions. Signed by Judge Tena Campbell on 1/4/13 (alt)

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF UTAH
NORTHERN DIVISION
ECONOVA, INC.,
Plaintiff,

ORDER and
MEMORANDUM DECISION

v.
DPS UTAH, COLLIER GROUP, and KEVIN
E. COLLIER,

Case No. 1:12-cv-174
Judge Tena Campbell

Defendants.

Plaintiff EcoNova, Inc. (EcoNova) filed a patent infringement suit against Defendants
DPS Utah, Collier Group, and Kevin E. Collier (collectively, DPS or Defendants). The court
conducted a Markman hearing at which the court heard arguments regarding ten disputed terms.
The following is the court’s construction of those terms.
I. FACTUAL BACKGROUND
Many companies use water as part of their operations, and those operations frequently
result in contaminated water that poses concerns if not properly treated. EcoNova manufactures
and sells water treatment devices called centrifugal separators. The centrifugal separator receives
contaminated water and spins it at high speeds and pressures to separate the water from other
components, such as particulate matter or oil. EcoNova owns five patents relating to centrifugal
separators: U.S. Patent No. 6,346,069 (filed Nov. 17, 1999) (’069 Patent); U.S. Patent No.
6,607,473 (filed Jan. 25, 2002) (’473 Patent); U.S. Patent No. 6,719,681 (filed Jan. 25, 2002)
(’681 Patent); U.S. Patent No. 7,060,017 (filed Apr. 9, 2004) (’017 Patent); and U.S. Patent No.
7,314,441 (filed May 30, 2006) (’441 Patent).
Defendant Kevin Collier was an employee of EcoNova from 2000 to 2005, and he was

listed on the patents as the inventor of each of EcoNova’s patents. Before Mr. Collier left, he
assigned all of his rights in the patents to EcoNova. After leaving EcoNova and pursuing an
unrelated business venture, Mr. Collier, along with others, formed DPS Utah and the Collier
Group. DPS Utah is a wholly-owned subsidiary of DPS Global in England. DPS began to
develop a centrifugal separator product called HydroLoc, and beginning in April and May 2011,
DPS publicly marketed the product concept in an effort to commercialize the HydroLoc.
After EcoNova became aware of Defendants’ efforts to market the HydroLoc unit,
EcoNova filed this patent infringement suit (see Docket No. 2), followed by an Emergency
Motion for a Temporary Restraining Order and Preliminary Injunction (Docket No. 19). On
November 14, 2012, the court heard arguments on the emergency motion for preliminary
injunction and conducted a hearing as required by Markman v. Westview Instruments, Inc., 517
U.S. 370 (1996) (en banc).1 For the purposes of the preliminary injunction only, EcoNova
proposed one claim from each of the five patents that would likely show how the HydroLoc
infringes: claim 22 of the ’069 Patent; claim 13 of the ’473 Patent; claim 27 of the ’681 Patent;
claim 1 of the ’017 Patent; and claim 1 of the ’441 Patent. Although the five claims are each
taken from a different patent, the patents are all related, and the claims use similar or identical
terms such that there is significant overlap, and the parties agreed that the court could give the
same construction to terms appearing in separate patents. After collapsing together the identical
language, the parties only dispute ten terms. The following is the court’s ruling for the claim

1

Two weeks later, on November 28, 2012, the court granted EcoNova’s motion for a
preliminary injunction. (See Docket No. 98.)
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construction of those ten disputed terms.2
II. ANALYSIS
A. Legal Standards Used During Claim Construction
Claim construction is an issue of law for the court to decide. Markman, 52 F.3d at
970–71. A court should begin with the language of the claim because the claims of a patent
“define the invention to which the patentee is entitled the right to exclude.” Phillips v. AWH
Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). Claim terms “are generally given their
ordinary and customary meaning,” which 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.” Id. at 1312–13. Sometimes, the
meaning of claims terms “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.” Id. at 1314. Beyond that, if a court needs evidence of the intended meaning,
it should first look to the intrinsic evidence (the context of the claims, the patent specification,
and the prosecution history). Id. at 1313–16. In most situations, an examination of the intrinsic
evidence will resolve any ambiguity in a disputed term. Id. at 1315. The court may not,
however, import limitations from the specification into the claim, such as by limiting the claims
to the embodiments described in the specification. Id. at 1323–24. If yet more evidence is
needed, the court may rely on extrinsic evidence, such as expert and inventor testimony,
dictionaries, and treatises. Id. at 1318. The court uses extrinsic evidence with caution, and will
not allow it to undermine the intrinsic evidence. Id. at 1319. With these principles in mind, the

2

The court ruled on four of the ten disputed terms in its preliminary injunction order
(Docket No. 98). This order reiterates and adds to the construction of those four terms.
3

court turns to the disputed language.
B. Interpretation of the Disputed Terms
As noted by the parties, the five patents are closely related. Because of crossover
between language in the five proposed claims, there are only ten disputed phrases to be
construed. See Omega Eng’g, Inc, v. Raytek Corp., 334 F.3d 1314, 1334 (Fed. Cir. 2003)
(noting that a court may “presume, unless otherwise compelled, that the same claim term in the
same patent or related patents carries the same construed meaning”). The five proposed sample
claims are quoted below, with the disputed terms and phrases underlined. Claim 22 of the ’069
Patent reads:
A separator comprising:
a vessel having a peripheral wall bounding a chamber, the chamber
communicating with an inlet channel and an outlet channel, the vessel
being rotatable about a rotational axis extending through the vessel;
a plurality of fins disposed within the chamber, each of the fins
outwardly projecting from the rotational axis in substantially parallel
alignment with the rotational axis;
an exit tube disposed along at least a portion of the rotational axis
of the vessel, at least a portion of the exit tube having a first end disposed
within the chamber and an opposing second end in fluid communication
with the exterior of vessel;
an extraction tube disposed within the chamber, the extraction tube
having a first end in fluid communication with the exit tube and an
opposing second end disposed a distance from the peripheral wall; and
a first disc disposed within the chamber, the first disc outwardly
projecting from the rotational axis so as to intersect with each of the
plurality of fins.
(’069 Patent col.23 ll.18–38 (emphasis added).) Claim 13 of the ’473 Patent reads:

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A method of separating a liquid-liquid mixture, comprising:
feeding the liquid-liquid mixture into a chamber of a vessel such
that the liquid-liquid mixture is pressurized within the vessel, the liquidliquid mixture comprising a heavy component and a light component, the
vessel including an inlet, a light component outlet channel, and a heavy
component outlet channel;
rotating the vessel about a rotational axis extending through the
vessel as the liquid-liquid mixture is feed into the chamber such that the
heavy component collects toward at least a portion of the peripheral wall
of the vessel and the light component collects toward the rotational axis;
passing the light component through the light component outlet
channel at a first pressure; and
passing the heavy component through the heavy component outlet
channel at a second pressure, the first pressure and the second pressure
being set such that a boundary line between the heavy component and the
light component is produced within the chamber at a radial distance from
the rotational axis wherein, the first pressure being different than the
second pressure.
(’473 Patent col.31 l.8–col.32 l.9 (emphasis added).) Claim 27 of the ’681 Patent reads:
A method for separating particulate matter from a fluid in which the particulate
matter is suspended, the method comprising:
feeding a fluid containing a particulate matter into a chamber of a
vessel through an inlet, the chamber being at least partially bounded by a
peripheral wall and the chamber also communicating with an outlet;
rotating the vessel about a rotational axis extending through the
vessel such that at least a portion of the particulate matter settles out of the
fluid and against at least a portion of the peripheral wall of the vessel;
delivering a stream of removal fluid into the rotating vessel at or
adjacent to the peripheral wall such that delivery of the removal stream
into the vessel causes at least a portion of the particulate matter settled
against the peripheral wall to resuspend within the fluid;
removing at least a portion of the fluid having the resuspended
particulate matter therein from the vessel through an extraction tube, the
extraction tube having an opening to receive the fluid at or adjacent to the
peripheral wall; and
removing through the outlet of the vessel the fluid from which the
particulate material has settled out.
(’681 Patent col.32 ll.21–44 (emphasis added).) Claim 1 of the ’017 Patent reads:
A separator comprising:
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a vessel having a peripheral wall bounding a chamber, the vessel
being rotatable about a rotational axis extending through the vessel, the
chamber communicating with an inlet and a first outlet;
a plurality of fins disposed within the chamber;
a second tube extending from toward the rotational axis to toward
the peripheral wall, the second tube having a first end in fluid
communication with the exterior of the vessel and an opposing second end
bounding a second outlet, the first outlet being disposed closer to the
rotational axis than the second outlet such that during use a fluid boundary
line can be formed between the first outlet and the second outlet; and
a first tube extending from toward the rotational axis to toward the
peripheral wall, the first tube being coupled with a fluid source for
selectively dispensing a fluid stream at or adjacent to the peripheral wall.
(’017 Patent col.29 ll.40–57 (emphasis added).) Claim 1 of the ’441 Patent reads:
A method for separating particulate matter from a fluid in which the particulate
matter is suspended, the method comprising:
feeding a fluid containing particulate matter into a chamber of a
vessel through an inlet, the chamber being at least partially bounded by a
peripheral wall and the chamber also communicating with a first outlet and
a second outlet;
rotating the vessel about a rotational axis extending through the
vessel such that at least a portion of the particulate matter settles out of the
fluid and against at least a portion of the peripheral wall of the vessel;
disturbing at least a portion of the particulate matter settled against
the peripheral wall so that at least a portion of the particulate matter settled
against the peripheral wall is resuspended within the fluid;
removing at least a portion of the fluid having the resuspended
particulate matter therein from the vessel through the first outlet; and
removing through the second outlet of the vessel the fluid from
which the particulate material has settled out.
(’441 Patent col.29 ll.44–65 (emphasis added).)
1. “Peripheral Wall of the Vessel”
The disputed phrase “peripheral wall of the vessel” appears in claim 1 of the ’441 Patent,
claim 13 of the ’473 Patent, and claim 27 of the ’681 Patent. EcoNova’s proposed construction
is “a material layer situated about at least a portion of the inner periphery of the vessel, the

6

material layer at least partially bounding the chamber, the peripheral wall associated with the
vessel.” (Pl.’s Mem. in Supp. 14, Nov. 9, 2012, ECF No. 72 (Pl.’s Mem.).) The Defendants’
proposed construction is “the outer wall of the vessel.” (Defs.’ Supplemental Mem. in Opp’n 8,
Nov. 9, 2012, ECF No. 67 (Defs.’ Mem.).)
Defendants contend that the “peripheral wall” means nothing more than the very
outermost wall of the vessel. EcoNova argues that “peripheral wall” could include not only the
outermost wall of the vessel, but also any structure that at least partially bounds the chamber
within, such as structures bolted to the interior, so long as it is some material layer that defines
the boundary at which the chamber ends and against which the particulate matter collects. The
court concludes that EcoNova’s proposed definition most closely captures the essence of the
claim, but is unnecessarily long and redundant. The court instead provides a claim construction
that is guided by intrinsic and extrinsic evidence.
The intrinsic evidence sheds some light on the dispute, but not enough. Before the phrase
“peripheral wall of the vessel” appears in claim 1 of the ’441 Patent, the claim reads “the
chamber [is] at least partially bounded by a peripheral wall.” (’441 Patent col.29 ll.48–49.) The
same is true for claim 27 of the ’681 Patent. (See ’681 Patent col.32 ll.25–26.) Moreover, there
are many instances of language in the patents’ specifications indicating that the “peripheral wall”
is situated at the boundary line of the chamber where the settled particulate matter collects while
the centrifuge is in operation.3 Based on this evidence, the court defines “peripheral wall” by
3

(See ’441 Patent abstract (“at least a portion of the particulate matter settles against at
least a portion of the peripheral wall.”); id. col.11 ll.57–60 (“in one embodiment solid-liquid
separator 10 operates by settling the particulate matter against or adjacent to wall 92 of vessel 60
from where it is subsequently removed.”); id. col.12 ll.13–15 (“the particulate matter in stream
38 is forced by the rotation of vessel 60 to accumulate against wall 92 . . . .”); id. col.14 ll.48–49
7

clarifying that the peripheral wall partially bounds the chamber,4 and by noting that at least some
of the particulate matter collects against at least part of the peripheral wall.
But because more is needed to fully construe “peripheral wall,” both EcoNova and the
Defendants point the court to dictionary definitions to aid the court’s interpretation. EcoNova
defines “peripheral” as “pertaining to, situated in, or constituting the periphery: peripheral
resistance on the outskirts of the battle area,” and “wall” as “a material layer enclosing space.”
The Defendants’ definition of “peripheral” is “of, relating to, affecting or forming a periphery or
surface part.” Based on these definitions, and on the intrinsic evidence in the patent, a clear
construction of “peripheral wall” should include both the phrase “a material layer” as well as
language showing that the peripheral wall is the boundary or surface at which the chamber ends.
This construction also dovetails with the intrinsic evidence that indicates the peripheral wall is
the structure against which the particulate matter collects.
Finally, there is some dispute about the meaning of the phrase “of the vessel.”

(“The centrifugal force, however, keeps the particulate matter substantially adjacent to perimeter
wall 92.”); id. col.14 ll.55–57 (“rotating vessel 60 resettles the particulate matter against
peripheral wall 92.”); see also ’473 Patent abstract, col.11 ll.56–58, col.12 ll.11–13, col.14
ll.47–48, col.14 ll.54–56 (containing nearly identical language as in the ’441 Patent); ’681 Patent
abstract, col.11 ll.64–66, col.12 ll.19–22, col.14 ll.54–55, col.14 ll.60–63 (same).)
4

The court disagrees with Defendants’ argument in their brief that the use of “chamber”
in the construction impermissibly imports a limitation. (See Defs.’ Supplemental Mem. in Opp’n
9, Nov. 9, 2012, ECF No. 67.) As noted above, the first appearance of the phrase “peripheral
wall” appears squarely within the same claim, only a few lines earlier, in the phrase “the chamber
being at least partially bounded by a peripheral wall.” The court’s use of “chamber” to define
“peripheral wall” is simply a reflection of how the peripheral wall was used in the context of that
claim. See Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (“the context
of the surrounding words of the claim also must be considered in determining the ordinary and
customary meaning of those terms.”) (quoting ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082,
1088 (Fed. Cir. 2003)). This is not the kind of importation of limitations from the specification
that is prohibited in Phillips. See id. at 1323–24.
8

Defendants argue that the vessel wall is synonymous with the peripheral wall, such that the
peripheral wall cannot be anything more than the outermost wall. EcoNova maintains that “of
the vessel” is a possessive phrase indicating that the peripheral wall is just one of the many subcomponents of the vessel. Based on a reading of the specification, the court agrees with
EcoNova. The vessel comprises many components, only one of which is the peripheral wall.
Accordingly, the court’s construction of “peripheral wall of the vessel” is “a material
layer at least partially bounding the chamber of the vessel.”
2. “Disturbing At Least a Portion . . . .”
The disputed phrase “disturbing at least a portion of the particulate matter settled against
the peripheral wall” appears in claim 1 of the ’441 Patent. EcoNova’s proposed construction is
“unsettling at least a portion of the particulate matter accumulated against the peripheral wall.”
(Pl.’s Mem. at 17.) The Defendants’ proposed construction is “altering the position of the
particulate matter that has settled against the peripheral wall by moving it inwardly against the
centrifugal force.” (Defs.’ Mem. at 9.)
This phrase needs very little construction—the parties only dispute the construction of the
term “disturbing” within the context of the patent. EcoNova proposes a construction that
replaces “disturbing” with a synonym taken from the dictionary. Defendants’ construction
requires the disturbance to be directed inwardly against the centrifugal force.
The court is not persuaded by Defendants’ proposed construction, which attempts to read
into the claim a limitation from only one of the many possible embodiments of the claimed
invention. See Phillips, 415 F.3d at 1323 (noting courts should “avoid the danger of reading
limitations from the specification into the claim”). Instead, the court will adopt EcoNova’s
9

proposed synonym of “unsettling” as the meaning of “disturbing” as it most closely resembles
the plain and ordinary meaning already apparent in the rest of the claim.
Accordingly, the court’s construction of the disputed phrase is “unsettling at least a
portion of the particulate matter settled against the peripheral wall.”
3. “Resuspend[ed] Within the Fluid”
The disputed phrase “resuspended within the fluid,” appears in claim 1 of the ’441 Patent,
and a similar disputed phrase, “resuspend within the fluid,” appears in claim 27 of the ’681
Patent. The parties agreed that the same construction should apply to both phrases. EcoNova’s
proposed construction is “to put particles that settled out of the fluid back into suspension in the
fluid.” (Pl.’s Mem. at 19.) The Defendants’ proposed construction is “suspended again within
the fluid, the fluid being that which contains particulate matter and was fed into the chamber of
the vessel through an inlet.” (Defs.’ Mem. at 13.)
At the hearing there was very little discussion about what “resuspend[ed]” means, and the
court finds no reason to construe that term further. The parties primarily dispute how the court
should construe “the fluid.” EcoNova contends that the meaning of “the fluid” should vary
depending on the context of each patent in which the term is used: for example, sometimes “the
fluid” could refer to the fluid containing particulate matter that is to be separated into its
components, and other times could refer to a cleaning fluid delivered into the vessel. Defendants
argue that “the fluid” can only mean one fluid, which is the fluid containing particulate matter
that is to be separated into its components.
The court agrees with Defendants’ proposition that “resuspend[ed]” should be defined as
“suspended again” because that more accurately captures the meaning of the claim. Also, the
10

court is partially persuaded that “the fluid” should mean a fluid “which contains particulate
matter and was fed into the chamber of the vessel through an inlet”—but only for claim 1 of the
’441 Patent. The court does not agree that “the fluid” should have one and only one meaning for
all of the patents. Instead, the court agrees with EcoNova that “the fluid” should be interpreted
differently depending on the ordinary meaning present in each patent. See, e.g., AK Steel Corp.
v. Sollac and Ugine, 344 F.3d 1234, 1243 (Fed. Cir. 2003) (noting that although it is unusual to
give different constructions to two similar claims, the court felt compelled to do so because
interpreting both claims in the same way would run “counter to the ordinary meaning of the
claims”). For example, the short phrase “the fluid” is used many times in claim 27 of the ’681
Patent, and could refer to two different fluids, both of which are important to the claim. If the
court were to define “the fluid” to mean only one kind of fluid in all instances, it would render
that claim absurd.
Accordingly, the court’s construction of the disputed phrase is “suspended again within
the fluid,” where “the fluid” can take on a different meaning depending on the context of each
patent. As applied to claim 1 of the ’441 Patent, “the fluid” refers to the only fluid referenced in
the claim, which is “a fluid which contains particulate matter and was fed into the chamber of the
vessel through an inlet.” (’441 Patent col.29 ll.47–48.) But, as applied to claim 27 of the ’681
Patent, “the fluid” in the disputed phrase “resuspended within the fluid” refers to the removal
fluid delivered into the vessel at or adjacent to the peripheral wall. (See ’681 Patent col.32
ll.33–34.)

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4. “Tube”
The disputed term “tube” appears in claim 27 of the ’681 Patent, claim 22 of ’069 Patent,
and claim 1 of the ’017 Patent. EcoNova’s proposed construction is “a conduit for conveying
liquids, gases, or solids.” (Pl.’s Mem. at 14.) The Defendants’ proposed construction is “a
hollow elongated usually cylindrical structure.” (Defs.’ Mem. at 16.)
EcoNova argues that “tube” not only includes hollow elongated cylindrical structures, but
also includes tunnel-like openings or channels in a larger structure. EcoNova cites to a set of
“transfer tubes” shown in the specification as support. (See ’017 Patent fig.20 & col.32 ll.18–21
(allegedly showing that “transfer tubes 400” are tunnel-like openings in the shaft assembly).)
The Defendants agree that “tube” could mean hollow elongated cylindrical structures, but
disagree with any further construction that embraces tunnels, openings, outlets, or orifices.
Defendants point to the prosecution history, arguing that “tube” cannot mean “outlet” because the
patent examiner allowed claim 27 of the ’681 Patent over prior art in part because the claim
indicates using an extraction “tube” rather than using “outlets” positioned in the peripheral wall.
(See Office Action Summary, Initial Common Exhibits Ex. 8, at 67, Nov. 6, 2012, ECF No. 658.)
The court concludes that Defendants’ proposed construction is correct. The intrinsic
evidence in the specification of the ’017 Patent indicates that “tube” should not cover orifices,
ports, outlets, or tunnels. There are many instances where the specification describes “orifices,”
“ports,” or “outlets”—but these indicate structures that are merely voids, holes, or openings in a
larger structure. For example, a “gas escape orifice” is a small hole in a plug (’017 Patent fig.5 &
col.7 ll.62–64), a “central orifice” is a hole in a flat disc (id. fig.5 & col.8 ll.22–27), “inlet ports”
12

are holes in a shaft (id. fig.20 col.22 ll.42–44), and “outlet end” is used to indicate the mouth of a
hollow shaft, as well as the opening of a hollow cylindrical manifold (id. fig.20 & col.23
ll.12–14).
In contrast, when the specification uses “tube,” it indicates an independent structure that
is hollow, elongated, and usually cylindrical. (See, e.g., ’069 Patent fig.5 & col.9 ll.45–60
(showing and describing exit tube 128 and extraction tubes 160 that are hollow elongated
cylindrical structures); ’681 Patent fig.5 & col.7 ll.14–31 (same), ’017 Patent fig.5 & col.7
ll.7–23 (same).) Even the “transfer tubes” cited to by EcoNova indicate a structure that is more
than merely a void, hole, or opening in a larger structure. As shown below in a detail of Figure
20 of the ’017 Patent, the specification calls for a shaft assembly 322 made up of many
independent structures, two of which are an outer shaft 392 enclosing an inner shaft 390. (See
id. fig.20 & col.23 ll.9–44.)

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The outer shaft and inner shaft are partially separated by a void called the “removal channel
396.” (See id.) The transfer tubes 400 are a hollow cylinder inserted in between the outer shaft
and the inner shaft, allowing liquid to move from outside the outer shaft to inside the inner shaft
but never be in fluid contact with the removal channel. (See id.) So, the “transfer tubes” are an
independent, hollow, cylindrical structure in between the outer shaft and the inner shaft; they are
not just a tunnel carved out of a larger structure, as argued by EcoNova. The transfer tubes
cannot be confused with the orifices, ports, or outlets as described in other parts of the
specification.
Moreover, as indicated by Defendants, there is evidence in the prosecution history of the
’681 Patent that supports drawing a distinction between an extraction “tube” and an “outlet”
located on the peripheral wall. As stated by the patent examiner, one of the reasons why claim
27 of the ’681 Patent was allowed was that prior art only disclosed methods that removed “the
settled out particulate matter through peripheral outlets on the peripheral wall,” but did not
disclose “removing the [sic] at least a portion of the fluid having the resuspended particulate
matter from the vessel through an extraction tube.” (See Office Action Summary, Initial
Common Exhibits Ex. 8, at 67, Nov. 6, 2012, ECF No. 65-8 (emphasis added).) As a result,
“tube” as used in the disputed language of the claims cannot embrace structures that are merely
voids or openings in a larger structure, such as orifices, tunnels, outlets, or mouths.
Finally, both parties offer dictionary definitions that partially overlap. The Defendants’
definition includes “a hollow elongated usually cylindrical structure.” (Defs’ Mem. at 15.)
EcoNova’s definition includes “any of various usually cylindrical structures” and “a hollow
elongated cylinder.” (Pl.’s Mem. at 21.) This extrinsic evidence corresponds with the intrinsic
14

evidence analyzed above.
Accordingly, the court’s construction of “tube” is “a hollow elongated usually cylindrical
structure, but does not include structures that are merely voids or openings in a larger structure,
such as tunnels, orifices, outlets, ports, or mouths.”
5. “Extending From Toward . . . .”
The disputed term “extending from toward the rotational axis to toward the peripheral
wall” appears in claim 1 of the ’017 Patent. EcoNova’s proposed construction is “the item so
described has an extent along the direction from the rotational axis to the peripheral wall.” (Pl.’s
Mem. at 22.) The Defendants’ proposed construction is “extending from near the rotational axis
to near the peripheral wall.” (See Defs.’ Mem. at 22.)
EcoNova argues that the disputed phrase merely indicates a direction, and cites to the
specification and prosecution history for support. Defendants contend that the disputed phrase
establishes both orientation and direction, arguing that “toward” in this context means “near.”
The court disagrees with Defendants because their proposed construction is too far from the
ordinary meaning of the word “toward,” is at odds with the intrinsic evidence, and appears to
import limitations from the various embodiments in the specification. Instead, the court agrees
with EcoNova that the phrase merely indicates a direction.
The word “toward” is a commonly understood term that indicates a direction, and the
specification of the ’017 Patent supports this conclusion. The specification uses “toward” or
“towards” thirty-nine times, many of which are unambiguously used to indicate a direction. (See,
e.g., ’017 Patent col.15 ll.40–41 (“As a result of the applied centrifugal force, heavy component
241 flows toward wall 92 at equator 97.”); id. col.26 ll.39–41 (“As feed stream 506 travels within
15

flow channels 502 toward transfer tubes 400, the stream is subjected to tremendous centrifugal
forces . . . .”).)
Moreover, the prosecution history of the ’017 Patent supports the conclusion that the
disputed phrase merely indicates a direction. In the first iteration of the ’017 Patent, claim 1 had
a dependent claim 5 that read “A separator as recited in claim 1, wherein the first tube is aligned
with or offset from the rotational axis.” (See U.S. Patent Application, Initial Common Exhibits
Ex. 9, at 175, Nov. 6, 2012, ECF No. 65-9.) The patent examiner rejected claim 5 for
indefiniteness because it was unclear how the first tube could extend “from the rotational axis to
the peripheral wall” (as required in independent claim 1), but also be aligned with the rotational
axis (as required in dependent claim 5). (See Office Action Summary, Initial Common Exhibits
Ex. 9, at 55, Nov. 6, 2012, ECF No. 65-9.) In other words, the patent examiner treated the phrase
“extending from toward the rotational axis to toward the peripheral wall” as a direction, noting
that it could not be “aligned” with the rotational axis.
For the above reasons, the court’s construction of “extending from toward the rotational
axis to toward the peripheral wall” is “the item so described has an extent along the direction
from the rotational axis to the peripheral wall.”
6. “A Second Tube Extending From Toward . . . .”
The disputed term “a second tube extending from toward the rotational axis to toward the
rotational axis” appears in claim 1 of the ’017 Patent. Both EcoNova and the Defendants agree
that the proper construction of this phrase simply combines the construction of the two previous
disputed phrases: “tube” and “extending from toward the rotational axis to toward the peripheral
wall.” (See J. Claim Construction and Pre-Hr’g Statement Br. 2, 14, Nov. 7, 2012, ECF No. 66
16

(J. Pre-Hr’g Statement).) EcoNova’s proposed construction is “a conduit for conveying liquids,
gases, or solids that has an extent along the direction from the rotational axis to the peripheral
wall.” (See Pl.’s Mem. at 21–22.) The Defendants’ proposed construction is “a hollow
elongated usually cylindrical structure extending from near the rotational axis to near the
peripheral wall.” (Defs.’ Mem. at 21–22.)
The court agrees with the parties that the meaning of this disputed term should be a
combination of the constructions of “tube” and “extending from toward the rotational axis to
toward the peripheral wall.” By combining the court’s construction of those two terms, the
construction of “a second tube extending from toward the rotational axis to toward the rotational
axis” is “a second hollow elongated usually cylindrical structure that has an extent along the
direction from the rotational axis to the peripheral wall, but does not include structures that are
merely voids or openings in a larger structure, such as tunnels, orifices, outlets, ports, or
mouths.”
7. “Extraction Tube”
The disputed term “extraction tube” appears in claim 27 of the ’681 Patent and claim 22
of ’069 Patent. EcoNova’s proposed construction is “a tube (as defined above) for extracting
liquids, gases, or solids from the chamber.” (See Pl.’s Mem. at 24.) The Defendants’ proposed
construction is “a hollow elongated usually cylindrical structure for removing separated material
from the separator.” (Defs.’ Mem. at 22.)
In its memo, EcoNova argued that “extraction tube” should build upon the meaning of
“tube” by merely adding a definition of what is being extracted through the tube. (See Pl.’s
Mem. at 24–25.) But at the Markman hearing, EcoNova’s position was that “extraction tube
17

should be defined as a tube for extracting materials,” and cautioned the court that further
construction risks importing limitations from the preferred embodiments. (Hr’g Tr. 125, 130–31,
Dec. 4, 2012, ECF No. 100.) Defendants contend that “extraction tube” should build upon the
meaning of tube by adding a definition of what is being extracted, namely the “separated
material.”
Both parties agree that the construction should be based upon the construction of “tube.”
The primary issue is whether the court should construe “extraction,” and if so, what is the proper
construction. The court agrees with the argument in EcoNova’s memo and with Defendants’
argument that “extraction” should be construed, but neither of the parties’ proposed constructions
accurately reflects the essence of the claims. Defendants attempt to limit the extracted material
only to “separated material,” which appears to import the limitation that only the particulate
matter is extracted, and not any liquid. But EcoNova attempts to add “gases” to the material that
can be extracted through the “extraction tubes,” which the court does not believe is anticipated in
the patents. Instead, the court instead provides a claim construction that is guided by the intrinsic
evidence.
As noted above, during claim construction the court may not import limitations from the
specification into the claim. Phillips v. AWH Corp., 415 F.3d 1303, 1323–24 (Fed. Cir. 2005)
(en banc). There is, though, a “distinction between using the specification to interpret the
meaning of a claim and importing limitations from the specification into the claim.” Id. at 1323.
“[T]he line between construing terms and importing limitations can be discerned with reasonable
certainty” if the court focuses “on understanding how a person of ordinary skill in the art would
understand the claim terms.” Id. In other words, the court asks “whether a person of skill in the
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art would understand the embodiments to define the outer limits of the claim term or merely be
exemplary in nature.” Id.
The court is persuaded that a person of ordinary skill in the art would understand from the
specification that “extract” in “extraction tube” means the removal of liquids and solids from the
chamber, but not gases. The ’069 Patent’s summary says that as the centrifugal separator spins,
the heavier components within the chamber, such as particulate matter and heavy liquids, move
away from the axis of rotation, whereas the lighter components, including gases, move toward
the axis of rotation. (’069 Patent col.3 ll.24–27, col.4 ll.29–30.) The summary also states that
“[e]ach extraction tube has . . . an opposing second end disposed a short distance from the wall of
the vessel.” (Id. col.3 ll.5–7.) And according to the summary, the extraction tubes are positioned
within the chamber so that their open end is near where the particulate matter collects (in the
form of a fluid slurry), and “the particulate matter is sucked into the extraction tubes and then
exits the vessel through the exit tube.” (Id. col.3 ll.33–42.) From the above, it is clear that the
extraction tubes may collect both solids and liquids.
But the ’069 Patent does not suggest that the open end of the extraction tubes are
positioned in a spot where gases collect. Instead, the summary indicates that gas is removed
through a small gas orifice on the exit tube (id. col.3 ll.45–47), which is disposed along the axis
of rotation (id. col.3 ll.1–2). Moreover, a number of the preferred embodiments in the ’681
Patent’s specification demonstrate that extraction tubes extend outward to collect liquid and
particulate matter, while gases collect near the central axis of rotation and are removed through
an orifice. (See ’681 Patent col.7 ll.45–49 (“Each extraction tube 160 has an opening 166 at its
second end 163 for receiving separated particulate matter and fluid.”); col.7 ll.1–6 (describing a
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gas escape orifice positioned in a plug that is near the central axis of rotation).) And just as in
the ’069 Patent, nowhere does the ’681 Patent suggest that the open end of the extraction tube is
positioned in a spot where gases collect. A person of skill in the art of centrifugal separators
would understand from these two patents that fluids and particulate matter are removed through
“extraction tubes,” while gases are removed using other structures near the axis of rotation.
As a result, the court’s construction of “extraction tube” builds upon the construction of
“tube” as construed above, and adds language defining “extraction,” such that “extraction tube”
means “a hollow elongated usually cylindrical structure for removing liquids and solids from the
chamber.”
8. “An Exit Tube . . . .”
The disputed term “an exit tube disposed along at least a portion of the rotation axis of
the vessel” appears in claim 22 of the ’069 Patent. EcoNova’s proposed construction is “a tube
(as defined above) with a first end situated within the chamber and a second end in fluid
communication with an exterior of the vessel through which contents of the chamber can pass
out. At least a portion of the tube extends along the axis about which the vessel rotates.” (See
Pl.’s Mem. at 27.) The Defendants’ proposed construction is “a hollow elongated usually
cylindrical structure located along the rotational axis through which separated material exits the
separator.” (Defs.’ Mem. at 23–24.)
Both parties agree that the construction should build upon the construction of “tube.”
Moreover, the parties do not dispute the construction of “disposed along at least a portion of the
rotation axis of the vessel.” Instead, the primary issue is how “exit” should be construed.
EcoNova contends that the construction should note that the exit tube has one open end within
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the chamber and the other open end outside of the chamber, allowing the contents of the chamber
to exit. EcoNova also contends that there is no limit on the type of material that can pass though
the exit tube, be it solid, liquid, or gas. The Defendants disagree, arguing that EcoNova’s
proposed construction attempts to import limitations appearing in claim 22 of the ’069 Patent,
and that only “separated material” is transported out using the exit tube.
The court disagrees with Defendants’ argument that EcoNova is attempting to improperly
import limitations by looking to language contained within the same claim as the disputed
phrase. As noted above in footnote 4, the court may look to the context of the surrounding words
of the claim to help determine the ordinary and customary meaning of a disputed term. This is
not the same as importing a limitation from a preferred embodiment described in the
specification. See Phillips, 415 F.3d at 1314, 1323–24; ACTV, Inc. v. Walt Disney Co., 346
F.3d 1082, 1088 (Fed. Cir. 2003). However, even though the court is allowed to look to the
context of the disputed phrase, the court is not persuaded by EcoNova that it is necessary in this
instance. Claim 22 of ’069 Patent already states that the exit tube “ha[s] a first end disposed
within the chamber and an opposing second end in fluid communication with the exterior of
vessel,” and that part of the claim is not in dispute. (’069 Patent col.23 ll.29–31.) Accordingly,
EcoNova’s proposed construction does not shed any light on the disputed elements of the phrase.
That said, the court agrees with the parties’ contentions that the construction should
clarify what is removed through the exit tube. The Defendants’ proposed construction
impermissibly attempts to import the limitation that only “separated material” is removed
through the exit tube. But EcoNova’s proposed construction does not add any language about
what is being removed through the exit tube. Rather, the court provides a claim construction that
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is guided by the intrinsic evidence.
As noted above, there is a distinction between importing limitations and using the
specification to construe claims, and the court may look to the specification to determine what a
person with ordinary skill in the art would understand to be the outer limits of the claimed
invention. See Phillips, 415 F.3d at 1323. The summary section of the ’069 Patent describes the
“exit tube” as being “disposed along the longitudinal axis of the vessel,” and as being connected
to the extraction tubes. (’069 Patent col.3 ll.1–7.) It also states that the “fluid slurry” that is first
removed through the extraction tubes “then exits the vessel through the exit tube.” (Id. col.3
ll.41–42.) Finally, the summary states that there is a “gas orifice on the exit tube” through which
gas is allowed to exit the chamber by passing through the exit tube, along with the particulate
matter extracted from the extraction tubes. (See id. col.3 ll.51–56.) Accordingly, the patent
summary teaches a person of ordinary skill in the art that the exit tube can be used to transport
solids, liquids, and gases.
Based on the foregoing, the court’s construction of “exit tube” builds upon the
construction of “tube” as construed above, and adds language defining “exit,” such that “exit
tube” means “a hollow elongated usually cylindrical structure for removing solids, liquids, and
gases from the chamber.”
9. “At or Adjacent . . . .”
The disputed term “at or adjacent to the peripheral wall” appears in claim 1 of the ’017
Patent and claim 27 of the ’681 Patent. EcoNova’s proposed construction is two-part: “‘adjacent
the peripheral wall’ means near the peripheral wall. ‘At the peripheral wall’ means in the
peripheral wall. When referring to a specific object (such as a tube), this phrase is satisfied if the
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object is either (1) near the peripheral wall, or (2) in the peripheral wall.” (See J. Pre-Hr’g
Statement 3, 21; cf. Pl.’s Mem. at 25.) The Defendants’ proposed construction is “on or near the
peripheral wall.” (Defs.’ Mem. at 27.)
All parties agree that “adjacent” means “near.” The primary dispute is what “at” means.
EcoNova argues that “at” means “in,” whereas the Defendants contend that “at” means “on.”
The court disagrees with both parties, and instead gives a construction in which “at” and
“adjacent” are synonyms.
The court does not believe that “on” is an appropriate construction because it would
render the device inoperable. “[A] construction that renders the claimed invention inoperable
should be viewed with extreme skepticism.” AIA Eng’g Ltd. v. Magotteaux Int’l S/A, 657 F.3d
1264, 1278 (Fed. Cir. 2011). Claim 27 of the ’681 states that the “extraction tube ha[s] an
opening to receive the fluid at or adjacent to the peripheral wall.” (’681 Patent col.32 ll.40–42.)
If the court were to adopt the Defendants’ proposed construction of “on,” the opening of the
extraction tube would be up against the wall, leaving no passage through which solids or liquids
could be extracted, and the centrifugal separator could not operate as claimed.
Nor does the court believe that “in” is appropriate, because such a construction would
read far more into the scope of the patent than what is there. The court must construe the claims
based on the patentee’s version of the claim as drafted, and may not interpret the claims in a way
that stretches beyond what one of skill in the art would understand that claim to be. Allen Eng’g
Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1349 (Fed. Cir. 2002). The phrase “at or adjacent” is
used in the claims to state where to dispense a stream of liquid, or where the opening of the
extraction tube is located. But nowhere do the specifications hint at using tubes, tunnels, or
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outlets “in” the peripheral wall. There is no basis upon which a person of ordinary skill in the art
would understand that the extraction tubes would have an opening “in” the wall, or that a stream
of liquid would be delivered “in” the peripheral wall. Furthermore, if “at” meant “in,” the
opening of the “extraction tube” would be “in” the peripheral wall, resulting in a tunnel-like
opening going through the peripheral wall. But because “tube” is construed by the court to mean
an independent structure, and not merely a tunnel in a larger structure, construing “at” to mean
“in” would put the two constructions in conflict. EcoNova’s proposed construction simply
“stretches the law too far.” See Allen Eng’g, 299 F.3d at 1349.
Because both “on” and “in” are incorrect constructions of “at,” the court supplies its own
construction, and concludes that “at” is synonymous with “adjacent” and means “near.” The
court must interpret claims in a manner giving effect to all terms in the claim. Becton, Dickinson
& Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1257 (Fed. Cir. 2010). And when different
words appear in the same claim, there is a presumption that each word means something
different. Bancorp Servs.. L.L.C. v. Hartford Life Ins. Co., 359 F.3d 1367, 1373 (Fed. Cir.
2004). However, these rules are not inflexible; “it is not unknown for different words to be used
to express similar concepts, even though it may be poor drafting practice.” Id. If there is
sufficient evidence, a court may give different words used in the same claim the same meaning.
See, e.g., Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1119–20
(Fed. Cir. 2004) (giving “connected” and “associated” the same meaning even though they both
appeared in the same claim because of the context and intrinsic evidence).
Based upon its reading of the specification and the impossibility of alternative
constructions, the court “must conclude that this is simply a case where [EcoNova] used different
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words to express similar concepts.” See id. Accordingly, the court concludes the construction of
“at or adjacent to the peripheral wall” to be “near to the peripheral wall.”
10. “The First Pressure and the Second Pressure . . . .”
The disputed phrase “the first pressure and the second pressure being set such that a
boundary line between the heavy component and the light component is produced within the
chamber at a radial distance from the rotational axis wherein, the first pressure being different
than the second pressure” appears in claim 13 of the ’473 Patent. EcoNova’s proposed
construction is “producing a first pressure and a second pressure (by, for example, adjusting a
flow rate of the light component and/or the heavy component) with a pressure differential
between them such that the pressure differential situates and maintains a boundary line near a
particular radial distance from the rotational axis.” (Pl.’s Mem. at 28.) The Defendants’
proposed construction is “the first and second pressures being selected and then established.”
(Defs.’ Mem. at 25.)
The primary dispute centers on how “set” is construed. Defendants argue that “set”
means to select and hold the pressures constant. EcoNova disagrees, arguing that the pressures
are allowed to vary while the centrifuge is in use to deal with changes of the material entering the
chamber. EcoNova further argues that pressure is necessarily linked to flow rate by Bernoulli’s
principle of fluid dynamics.5 The court does not believe that either definition adequately reflects
the scope of the claim. Defendants’ proposed construction is incomplete, while EcoNova’s
proposed construction overcomplicates the meaning by adding examples and using terms that are
5

In its most simple form (and assuming a non-viscous and non-compressible fluid),
Bernoulli’s principle states that as the speed or flow of the fluid increases, the pressure of the
fluid exerted on the walls of its container decreases, and vice versa.
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less clear than the language of the claim itself. Instead, the court provides a claim construction
that is guided by the patent’s intrinsic evidence.
First, the disputed phrase “the first pressure and the second pressure” by itself is unclear.
The court clarifies by adding language that states where the first pressure and second pressure are
located. Based on the context of the claim, the “first pressure” refers to the pressure at the “light
component outlet channel,” and the “second pressure” refers to the pressure at the “heavy
component outlet channel.” (’473 Patent col.32 ll.1–4.)
Second, the court agrees with EcoNova that the outlet pressure is invariably linked with
flow rate by Bernoulli’s principle, such that, in this context, changes in flow rate necessarily
result in a change in pressure, and vice versa. The court also agrees with EcoNova that “set”
does not require the pressure to never change. As noted in the specification, it is anticipated that
the flow rates—and hence the pressures—at each outlet “will be adjusted to maintain boundary
line 245 at a preferred distance range away from rotational axis 90” while the device is in
operation. (’473 Patent col.18 ll.51–65 (emphasis added).) The word “set” cannot mean the
flow rates/pressures must always remain the same. Instead, the specification emphasizes that:
“One of the unique benefits of the inventive system is its ability to
compensate for changes in the ratio of the two immiscible liquids in supply stream
30. For example, assuming an oil/water supply stream 30 feeds liquid-liquid
separator 244 at a 50/50 mixture. At a given time, the 50/50 mixture suddenly
experiences a load change to 10% oil and 90% water. Where the rotational
velocity of liquid-liquid separator 244 remains substantially constant, an increased
amount of water (heavy component 241) will tend to cause the boundary line 245
to move toward the rotational axis 90. Accordingly the pressure sensed at first
valve 248 will decrease while the pressure sensed at second valve 256 will
increase. As a result, second valve 256 will automatically close slightly and first
valve 248 will automatically open slightly. As a result, the operating pressures for
valves 248 and 256 and the pressure differential between the valves 248 and 256
are continually held relatively constant even though the ratio of liquids in supply
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stream 30 may continually change. As such, the position of boundary line 245 is
held relatively constant within vessel 60.”
(’473 Patent col.17 ll.42–61.) In other words, although the invention allows the flow
rates/pressures at the two outlets to vary, the difference between them (the pressure differential)
will be kept relatively constant. To “set” the pressures then is inextricably linked to the
maintenance of a pressure differential by varying the flow rates/pressures. Based on this intrinsic
evidence, the court believes that “set” should be defined in relation to what it is setting, namely a
pressure differential that maintains a boundary line at a preferred position within the chamber.
Accordingly, the court’s construction of the disputed phrase is as follows: “the first
pressure at the light component outlet channel and the second pressure at the heavy component
outlet channel are set to create a pressure differential that maintains a boundary line between the
heavy component and the light component within the chamber at a radial distance from the
rotational axis.”
III. CONCLUSION
For the above reasons, the disputed claim terms are given the definitions set forth in this
opinion.
SO ORDERED this 4th day of January, 2013.
BY THE COURT:

TENA CAMPBELL
United States District Judge

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