Titan Atlas Manufacturing, Inc. v. Sisk
Filing
172
OPINION AND ORDER re: claim construction. Signed by Judge James P. Jones on 6/8/12. (sc)
IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF VIRGINIA
ABINGDON DIVISION
TITAN ATLAS MANUFACTURING
INC. and STRATA MINE SERVICES,
LLC,
Plaintiffs,
v.
FRANK A. SISK and PRECISION MINE
MINE REPAIR, INC.,
Defendants.
)
)
)
)
)
)
)
)
)
)
)
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FRANK A. SISK and PRECISION MINE )
)
REPAIR, INC.,
)
Plaintiffs,
)
)
v.
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TITAN ATLAS MANUFACTURING
)
INC. and STRATA MINE SERVICES,
)
LLC,
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Defendants.
)
Case No. 1:11CV00012
Case No. 1:11CV00068
OPINION AND ORDER
Gregory L. Hillyer, Feldman Gale, P.A., Philadelphia, Pennsylvania, Javier
Sobrado, Feldman Gale, P.A., Miami, Florida, and Mark D. Loftis, Woods Rogers
PLC, Roanoke, Virginia, for Frank Sisk and Precision Mine Repair, Inc. Mark
Varboncouer, McGuireWoods LLP, Chicago, Illinois, and Jonathan Blank and
Lisa Lorish, McGuireWoods LLP, Charlottesville, Virginia, for Strata Mine
Services, LLC. David Ludwig, Dunlap, Grubb & Weaver, PLLC, Leesburg,
Virginia, for Titan Atlas Manufacturing, Inc.
In this patent infringement action, following a so-called Markman
proceeding, I construe as a matter of law the disputed claims of the subject patent.
I
The patent at the center of this dispute, U.S. Patent No. 5,879,231 (“the ’231
patent”) is entitled “Mine Ventilation Structure” and is owned by Frank A. Sisk.
Precision Mine Repair, Inc. (“PMR”) is the exclusive licensee of the ‘231 patent.
In their First Amended Complaint, Titan Atlas Manufacturing, Inc. (“Titan”) and
Strata Mine Services, LLC (“Strata”) request a declaration that the ’231 patent is
invalid and that the prefabricated construction panels sold by Titan and purchased
and used by Strata do not infringe on the patent.
In their Third Amended
Complaint, Sisk and PMR claim that Strata willfully infringed the patent, that
Titan induced Strata’s infringement and that Titan and Strata together induced
infringement by others, all in violation of 35 U.S.C.A. § 271 (West 2001 & Supp.
2011). 1 Jurisdiction of this court exists pursuant to 28 U.S.C.A. §§ 1331, 1338(a),
1
Sisk and PMR initially filed their Complaint against Titan and Strata in the
Northern District of Illinois. That case was transferred to this court and consolidated
with Titan’s and Strata’s action seeking a declaration of non-infringement. All claims
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and 2201 (West 2006 & Supp. 2011). The parties have briefed and argued the
proper construction of certain claims of the ’231 patent and the issues are ripe for
decision.
II
The ’231 patent sets forth an invention designed to ventilate underground
mines by blocking a mine passageway or preventing the mixture of ventilation air
at the intersection of two passageways. The need for ventilation in underground
mines is obvious, and increases as the mining activity takes place further from the
source of the ventilation. Generally, ventilation systems make use of air shafts
formed by selected passageways through which intake air and return air are
directed. Intersecting passageways are blocked with a partition or ducted through
an overcast or undercast. For the ventilation system to work properly, it must be
impervious to air so that intake air and return air do not mix.
The ’231 patent contains twelve claims, all of which describe different
aspects of the mine ventilation structure.
The structure itself is made up of
lightweight wire panels sandwiched around a core of insulation with wire struts
connecting the panels by running through the insulation to form a truss system.
made by any party in one case are deemed to constitute compulsory counterclaims in the
other case, if so required by Federal Rule of Civil Procedure 13(a).
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The panels are constructed in the passageways of the underground mine to form
the walls of an air shaft and a layer of concrete is applied extending beyond the
structure itself and onto the walls and ceiling of the passageway to form an air seal.
The main benefits of the structure, according to the inventor, are that it creates an
air seal, requires no maintenance, is lightweight, and is easy to install underground.
The ’231 patent has two independent claims, both of which are the subject of
the parties’ claim construction arguments. The other ten claims are dependent
variations of these two.
Claim 1 states:
A mine ventilation structure for use in an underground mine
having a grid of intersecting passageways separated by columns of
remaining material, said passageways having sidewalls and a ceiling,
said structure comprising a wall formed of a plurality of panels fitted
across the passageway and to the ceiling, said panels assembled in
side-by-side relationship with wire fasteners, each panel having first
and second spaced apart wire grids with an insulation core, said grids
interconnected with strut wires passing through the insulation core
and forming a truss system, and a layer of concrete applied as gunite
or shotcrete to the assembled panels embedding the strut wires and
covering the wire grids, said layer of concrete extending beyond the
wall along the passageway and the ceiling whereby the structure
forms an air seal in the passageway.
(’231 patent, col. 6, l. 61 – col. 7, l. 8.)
Claim 2 describes the structure as used at the intersection of two mine
passageways:
A mine ventilation structure for usage at an intersection of first
and second passageways in an underground mine having a grid of
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intersecting passageways separated by columns of remaining material,
said ventilation structure defining a first airway communicating with
said first passageway and a second airway communicating with said
second passageway, said ventilation structure comprising
a pair of generally parallel, spaced-apart sidewalls forming the
sidewalls of said first airway, each of said sidewalls formed
of a plurality of panels fitted across the second passageway,
said panels assembled in side-by-side relationship with wire
fasteners,
a deck which is a roof of one of said first and second airways
and a floor of the other of said first and second airways, said
deck formed of a plurality of panels spanning the full
distance between the sidewalls, said panels assembled in
side-by-side relationship with wire fasteners,
said ventilation structure further comprising a pair of wing
walls, if said spaced-apart sidewalls do not reach the ceiling,
each said wing walls formed of a plurality of panels spanning
the full distance between the deck and the ceiling, said panels
assembled in side-by-side relationship with wire fasteners
and said wing walls positioned on the deck above the
sidewalls,
each of the panels in the sidewalls, deck and wing walls having
first and second spaced apart wire grids with an insulation
core, said grids interconnected with strut wires passing
through the insulation core and forming a truss system, and a
layer of concrete applied as gunite or shotcrete to the
assembled panels embedding the strut wires and covering the
wire grids, said layer of concrete extending beyond the
ventilation structure along the first and second passageways
and to the ceiling whereby the ventilation structure forms an
air seal between the first and second airways.
(’231 patent, col. 7, ll. 9-45.) The dependent claims outline various versions of the
structures in claims 1 and 2.
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III
In this opinion, I undertake the first step in any patent infringement case – to
construe the meaning and scope of the patent claims at issue.
Markman v.
Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc), aff’d, 517
U.S. 370 (1996). This process, called claim construction, is a matter of law
reserved exclusively for the court. Id. at 979, 984. This is distinct from the
question of fact of whether the accused product infringes on the patent claims,
which is the province of the jury. Id. “Victory in an infringement suit requires a
finding that the patent claim covers the alleged infringer’s product or process,
which in turn necessitates a determination of what the words in the claim mean.”
Markman, 517 U.S. at 374 (citation and internal quotation marks omitted).
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.” Innova/Pure
Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir.
2004). In the task of claim construction, claim terms “are generally given their
ordinary and customary meaning.” Phillips v. AWH Corp., 415 F.3d 1303, 1312
(Fed. Cir. 2005) (en banc) (citation and internal quotation marks omitted). “[T]he
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 effective filing date of the patent application.” Id. at 1313.
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“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.” Id.
“[T]he claims themselves provide substantial guidance as to the meaning of
particular claim terms.” Id. at 1314. “Other claims of the patent . . . can also be
valuable sources of enlightenment as to the meaning of a claim term.” Id.
The claims must also “be read in view of the specification, of which they are
a part.” Id. at 1315 (citation and internal quotation marks omitted). “[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. at 1313. “[T]he specification is
always highly relevant to the claim construction analysis” as it is the “best source
for understanding” the meaning of a disputed term, “informed, as needed, by the
prosecution history.” Id. at 1315 (citations and internal quotation marks omitted).
The claims, the specification, and the prosecution history are all forms of
intrinsic evidence the court may rely on during claim construction. The court may
also examine extrinsic evidence, but should do so with caution.
“Extrinsic
evidence consists of all evidence external to the patent and prosecution history,
including expert and inventor testimony, dictionaries, and learned treatises.”
Markman, 52 F.3d at 980. “[W]hile extrinsic evidence can shed useful light on the
relevant art, . . . it is less significant than the intrinsic record in determining the
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legally operative meaning of claim language.” Phillips, 415 F.3d at 1317 (citation
and internal quotation marks omitted).
“Extrinsic evidence is to be used for the court’s understanding of the patent,
not for the purpose of varying or contradicting the terms of the claims.” Markman,
52 F.3d at 981.
It “is not for the purpose of clarifying ambiguity in claim
terminology. It is not ambiguity in the document that creates the need for extrinsic
evidence but rather unfamiliarity of the court with the terminology of the art to
which the patent is addressed.” Id. at 986. “[E]xtrinsic evidence cannot add,
subtract, or vary the limitations of the claims.” Id. at 985. Therefore, “[t]he
district court’s claim construction, enlightened by such extrinsic evidence as may
be helpful, is still based upon the patent and prosecution history.” Id. at 981.
In construing the claim terms, this court is not bound by the proposed
constructions presented and argued by the parties. See Marine Polymer Techs.,
Inc. v. HemCon, Inc., 672 F.3d 1350, 1359 n.4 (Fed. Cir. 2012) (citing Exxon
Chem. Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553, 1555 (Fed. Cir. 1995)).
IV
The parties in this case dispute terms found in both Claim 1 and Claim 2. In
both claims, the parties dispute the meaning of the preambles, the whereby clauses,
“concrete,” “a layer of concrete applied as gunite or shotcrete,” “wire fasteners,”
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and “insulation core.” By applying the applicable principles of claim construction,
I find the following to be the proper construction of the disputed terms.
A. PREAMBLE.
The preamble of Claim 1 reads, “A mine ventilation structure for use in an
underground mine having a grid of intersecting passageways separated by columns
of remaining material, said passageways having sidewalls and a ceiling, said
structure comprising. . . .” (’231 patent, col. 6, ll. 61-64.) The preamble of Claim
2 reads, “A mine ventilation structure for usage at an intersection of first and
second passageways in an underground mine having a grid of intersecting
passageways separated by columns of remaining material, said ventilation structure
defining a first airway communicating with said first passageway and a second
airway communicating with said second passageway, said ventilation structure
comprising. . . .” (’231 patent, col. 7, ll. 9-15.) Strata and Titan argue that the
preambles do not limit the claims. Sisk and PMR contend that the preambles need
no construction but their argument assumes that the preambles do state limitations
on the claims. 2
2
Often the patentee in an infringement action will seek to broaden the scope of
the patent during claim construction as a litigation strategy, while the alleged infringer
will seek to narrow that scope. Here Sisk and PMR seek to narrow the claims,
presumably as an answer to the defense of invalidity, while Strata and Titan want to
broaden them.
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Claim preambles are to be construed consistently with the general principles
of claim construction outlined above.
See Bell Commc’ns Research, Inc. v.
Vitalink Commc’ns Corp., 55 F.3d 615, 620 (Fed. Cir. 1995) (“[A] claim preamble
has the import that the claim as a whole suggests for it. In other words, when 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.”). Id. A preamble is limiting “if it recites essential
structure or steps, or if it is necessary to give life, meaning, and vitality to the
claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808
(Fed. Cir. 2002) (citation and internal quotation marks omitted). A preamble is not
limiting where the claim body defines a structurally complete invention and “uses
the preamble only to state a purpose or intended use for the invention.” Id.
(citation and internal quotation marks omitted). In Catalina, the Federal Circuit
established that a preamble will generally not be limiting unless there is clear
reliance upon the preamble to distinguish prior art in the prosecution history or
unless the preamble is necessary to provide antecedent basis for the body of the
claim. Id. at 808-09.
I find that the preambles do state limitations on Claims 1 and 2. The
preambles establish that the essential fact that the invention protected by the ’231
patent is a mine ventilation structure that is constructed in and as part of the
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passageways of an underground mine.
The invention is a “mine ventilation
structure,” not a structure of walls covered in concrete outside of and separate from
an underground mine. The terms of the claims also rely upon the preamble for
essential context. Claim 1, for example, states, “a wall formed of a plurality of
panels fitted across the passageway and to the ceiling.” (’231 patent, col. 6, ll. 6466.) Similarly, Claim 2 states, “a pair of generally parallel, spaced-apart sidewalls
forming the sidewalls of said first airway, each of said sidewalls formed of a
plurality of panels fitted across the second passageway. . . .” (’231 patent, col. 7, ll.
16-19.) Without the preambles’ description of the invention as a “mine ventilation
structure for use in an underground mine having a grid of intersecting passageways
separated by columns of remaining material,” the terms “passageways” and
“ceiling” in the claims are without essential context. (’231 patent, col. 6, ll. 6163.)
The preambles establish that the invention described by the patent is a
structure built into the passageways and ceiling of an underground mine.
Strata and Titan argue that the preamble in this case only states the purpose
or intended use of the invention and that the body of the claim defines a
structurally complete invention.
(Strata Opening Claim Constr. Br. 6 (citing
Catalina Mktg. Int’l, Inc., 289 F.3d at 808).)3
However, Strata and Titan’s
description of the structure undermines their argument.
3
They describe the
Titan has not filed separate briefs but has relied upon Strata’s arguments.
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invention as a wall or a hallway formed of wire panels covered in concrete. (Id.)
That is not a complete description of the structure. Rather, the claims specifically
describe a structure fitted into the passageways and ceilings of an underground
mine and completed by the application of concrete to both the wire panels and the
walls of the passageways and the ceilings. The invention would not be cognizable
without reference to the preamble. See Catalina Mktg. Int’l, Inc., 289 F.3d at 808
(noting that “when reciting additional structure or steps underscored as important
by the specification, the preamble may operate as a claim limitation”); see also
Bicon, Inc. v. Straumann Co., 441 F.3d 945, 952 (Fed. Cir. 2006) (stating that
when limitations in the body of the claim “‘rely upon and derive antecedent basis
from the preamble, then the preamble may act as a necessary component of the
claimed invention.’” (quoting Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332,
1339 (Fed. Cir. 2003)).
Further, the specification, particularly the section addressing prior art,
supports the interpretation of the preamble as a limitation. See Corning Glass
Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989) (“The
effect preamble language should be given can be resolved only on review of the
entirety of the patent to gain an understanding of what the inventors actually
invented and intended to encompass by the claim.”). The specification describes
the problems with prior art in the context of mine ventilation and describes the
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specific problem the invention seeks to resolve as the need for a mine ventilation
system that is airtight, relatively easy to install, and requires minimal maintenance.
(’231 patent, col. 1, l. 13-55.) See Gen. Elec. Co. v. Nintendo Co., 179 F.3d 1350,
1361-62 (Fed. Cir. 1999) (finding that the specification “makes clear that the
inventors were working on the particular problem of displaying binary data on a
raster scan display device and not general improvements to all display systems.”).
For these reasons, I will construe the preambles to Claims 1 and 2 as
limitations on the claims.
B. WHEREBY CLAUSE.
The whereby clause of Claim 1 states, “whereby the structure forms an air
seal in the passageway.” (’231 patent, col. 7, ll. 7-8.) The whereby clause of
Claim 2 states, “whereby the ventilation structure forms an air seal between the
first and second airways.” (’231 patent, col. 7, ll. 44-45.) Strata and Titan argue
that the court should find that the clauses do not state limitations on the claims.
Sisk and PMR argue that the court should find that the clauses are part of the
claims and state positive limitations.4
“A ‘whereby’ clause that merely states the result of the limitations in the
claim adds nothing to the patentability or substance of the claim.”
4
Tex.
Similar to their argument on the preambles, Sisk and PMR assert that the
whereby clauses need not be construed, but they do seek a ruling that the whereby clauses
limit the claims.
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Instruments Inc. v. U.S. Int’l Trade Comm’n, 988 F.2d 1165, 1172 (Fed. Cir. 1993)
(concluding, in process claims, that the whereby clauses described “the result of
arranging the components of the claims in the manner recited in the claims” and
thus were not limitations).
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.” Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329
(Fed. Cir. 2005); see also Scheinman v. Zalkind, 112 F.2d 1017, 1019 (C.C.P.A.
1940) (finding that whereby clause in structure claim were “structural in character
and import[ed] into the count the structural features which both parties sought to
produce.”).
I find that the whereby clauses of Claims 1 and 2 state the necessary results
of fabricating a mine ventilation structure according to the patent. Although the
element of an “airtight seal” is not stated in the body of the claims, the structure
described in the body of the claims is an airtight structure. The patent specification
clarifies that an airtight seal necessarily occurs when the structure is created as
dictated by the patent. For example, the specification states, “The layer of concrete
is applied such that it extends beyond the margins of the wall along the
passageway and the ceiling ensuring that the ventilation structure forms an air
seal.” (’231 patent, col. 2, ll. 14-17.) It also states:
When the infrastructure of the overcast or undercast is coated
with a layer of concrete applied as gunite or shotcrete, a monolithic
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ventilation structure is formed which is virtually air impervious. A
good air seal is also obtained between the ventilation structure and the
pillars, requiring substantially no maintenance, when the pillars are
sprayed with concrete applied as gunite or shotcrete several feet
beyond the margins of the ventilation structure.
(’231 patent, col. 2, ll. 35-42.) Based on this language, the structure recited in the
claims is an airtight structure such that the whereby clause adds nothing to the
claims themselves.
Sisk and PMR argue that the whereby clauses state a structure, the airtight
seal, necessary to the patentability of the claims. They argue that there are no
disclosures in the patent indicating that an airtight seal is presumed to exist or is an
inherent part of the claimed structure. (Sisk and PMR Resp. Claim Constr. Br. 9.)
As discussed above, the specification of the patent actually indicates that the
airtight seal is a presumed and inherent part of the claimed structure.
The
specification describes an airtight seal as being automatically formed when the
layer of concrete is applied to the panels. Cf. C & C Jewelry Mfg., Inc. v. West,
No. 09-1303-JF(HRL), 2010 WL 2681921, at *3 (N.D. Cal. Jul. 6, 2010) (finding
that the clause “to provide a pleasing appearance” did not state the necessary result
of the method recited in the claims and therefore stated a limitation on the claim);
Stimsonite Corp. v. NightLine Markers, Inc., 33 F. Supp. 2d 703, 709 (N.D. Ill.
1999) (“[T]he ‘whereby’ clause in Claim 20 simply states the requisite
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consequence of forming a reflective marker with the dimensions set forth in the
’513 Patent claims.”).
It is true, as Sisk and PMR argue, that the fact that the claimed structure
forms an airtight seal was relied upon in distinguishing prior art which did not
form an airtight seal. (’231 patent, col. 1, ll. 24-35.) However, that does not
change the fact that the structure described in the claims is, according to the
specification, an airtight structure. In other words, the element relied upon by Sisk
in establishing patentability is inherent to the structure described in the claims and
the whereby clause does not add anything material or substantive to the claims.
See Minton v. Nat’l Ass’n of Sec. Dealers, Inc., 226 F. Supp. 2d 845, 867 (E.D.
Tex. 2002), aff’d, 336 F.3d 1373 (Fed. Cir. 2003). It is, therefore, unnecessary to
construe it as an additional limitation on the claims.
C. “CONCRETE.”
Both Claims 1 and 2 include the term “concrete” in the body of the claims.
Strata and Titan argue that the term should be construed as “concrete or mortar.”
Sisk and PMR argue that the term does not need construction.
I find that the term concrete, understood in its ordinary and customary
context and in the specific context of the patent specification, includes the term
mortar.
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The “ordinary and customary” meaning of “concrete” is a “mixture of
cement, water, sand, and coarser material such as gravel or crushed stone.” Alfred
H. White, Engineering Materials 406 (1st ed. 1939).5 Although in the body of the
claims there is no indication that the construction of “concrete” should be anything
other than this ordinary meaning, the specification states, “The concrete applied as
gunite or shotcrete is preferably formed with mortar mix and rich in cement, dry
mixed at a nozzle . . . with just enough water to form a mixture that when sprayed
will stay in place.” (’231 patent, col. 6, ll. 6-9.) Thus, it is clear that the term
concrete must be able to incorporate the term mortar. If it did not, then the claim
term would exclude a preferred embodiment.
‘“[A] claim interpretation that
excludes a preferred embodiment from the scope of the claim is rarely, if ever,
correct.’” MBO Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323, 1333 (Fed.
Cir. 2007) (quoting On-Line Techs., Inc. v. Bodenseewerk Perkin-Elmer GmbH,
386 F.3d 1133, 1138 (Fed. Cir. 2004)).6
5
This definition of concrete, and that of mortar, are taken from a treatise on
engineering materials which is the appropriate context for the definition of these elements
of the patent. See Hoechst Celanese Corp. v. BP Chems. Ltd., 78 F.3d 1575, 1580 (Fed.
Cir. 1996) (“[A] general dictionary definition is secondary to the specific meaning of a
technical term as it is used and understood in a particular technical field.”).
6
Sisk and PMR argue, without explanation, that the statement that the concrete is
“preferably formed with mortar mix” is not a preferred embodiment. It is unclear on
what basis they assert this position as the specification clearly states that use of mortar
mix to create the concrete is preferred.
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The term mortar applies to a “mixture of cement, water and sand.” White,
supra. On the face of it, the definition of the term concrete includes mortar, as it is
made up of a “mixture of cement, water and sand,” plus coarser materials such as
gravel or crushed stone.
The description of the concrete in the specification
supports this interpretation of the term as inclusive of mortar because it states that
the concrete used in completing the structure is “preferably formed with a mortar
mix and rich in cement.” Thus, a person of ordinary skill in the art would interpret
the term concrete as it is used in this patent to include mortar and/or mortar mix, as
that is how the specification uses the term. See Phillips, 415 F.3d at 1313 (“‘It is
the person of ordinary skill in the field of the invention through whose eyes the
claims are construed. Such person is deemed to read the words used in the patent
documents with an understanding of their meaning in the field, and to have
knowledge of any special meaning and usage in the field.’” (quoting Multiform
Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998)).
Strata and Titan argue that concrete should be defined as “concrete or
mortar” because the specification indicates that the preferred embodiment is made
with mortar mix. However, Strata and Titan’s proposed definition actually serves
to broaden the term concrete in a way that is not in conformity with the
specification. To construe the term concrete as “concrete or mortar” is to say that
the layer of concrete can be made of either concrete or mortar. This is not
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supported by the claims or the specification. The claims state that the structure is
made with a “layer of concrete.” The specification states that the layer of concrete
“is preferably formed with mortar mix.” In other words, the specification provides
that mortar mix is a component of the concrete; not that the layer itself is made of
mortar. This is at the heart of the disagreement between the parties. Sisk and
PMR agree that the concrete can be made with mortar (Sisk and PMR Opening
Claim Constr. Br. 11), but assert that Strata and Titan’s proposed definition is too
broad. I agree with this assessment for the reasons stated.
Given this understanding, I find that the term concrete does not need
construction. The term is clearly used in its ordinary sense in the claims and the
specification indicates that the term can, and in the preferred embodiment does,
include mortar/mortar mix as a component.
D. “A LAYER OF CONCRETE APPLIED AS GUNITE OR SHOTCRETE.”
Both Claims 1 and 2 state that the layer of concrete is to be “applied as
gunite or shotcrete” to complete the invention. Strata and Titan argue that because
this phrase is a process claim within an apparatus claim, it should essentially be
read out of the claim.
Sisk and PMR contend that the phrase requires no
construction and is a limitation on the claim.
I find that the phrase “a layer of concrete applied as gunite or shotcrete,”
read in context, states a pure apparatus claim because it “describes the product
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more by its structure than by the process used to obtain it.” Hazani v. U.S. Int’l
Trade Comm’n, 126 F.3d 1473, 1479 (Fed. Cir. 1997). Both the claims of the
patent and the specification describe a layer of concrete that forms the final coating
to the mine ventilation structure and completes the airtight seal by covering the
wire panels, insulation core, and strut wires and extending beyond the structure to
the walls and ceilings of the passageways in which the structure is embedded. The
phrase “a layer of concrete applied as gunite or shotcrete” describes the structural
relationship of the concrete to the underlying panels and to the walls and ceiling of
the underground mine. Id.; see also LG Display Co., v. AU Optronics Corp., 686
F. Supp. 2d 429, 445-46 (D. Del. 2010).
Strata and Titan argue that the phrase describes a process for applying the
concrete – gunite or shotcrete – and therefore has no place in an apparatus claim.
The terms “gunite” and “shotcrete” are used to describe concrete applied to a
surface by being sprayed as a dry-mix or wet-mix through a hose. See Am.
Shotcrete Ass’n, Shotcrete FAQs, available at http://www.shotcrete.org/ASAfaqs
.htm (last visited June 7, 2012). Strata and Titan contend that because these terms
inherently describe a particular process for applying concrete, they have no
restrictive application in an apparatus claim. See Baldwin Graphic Sys., Inc. v.
Siebert, Inc., 512 F.3d 1338, 1344 (Fed. Cir. 2008) (finding that claim stated a pure
apparatus claim and had no process limitations).
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It is true that a court must generally seek to avoid reading process limitations
into an apparatus claim “because the process by which a product is made is
irrelevant to the question of whether that product infringes a pure apparatus claim.”
Id. “The mere use in a claim of structural or characterizing terms derived from
processes or methods, however, does not prevent a claim from being considered a
true product claim.” Biacore v. Thermo Bioanalysis Corp., 79 F. Supp. 2d 422,
456 (D. Del. 1999). Indeed, courts generally seek to interpret potential process
terms as “‘structural limitations when used in a adjective non-process sense and
define a physical characteristic of the apparatus.’” LG Display Co., 686 F. Supp.
2d at 445-46 (quoting R2 Med. Sys., Inc. v. Katecho, Inc., 931 F. Supp. 1397, 1425
n.5 (N.D. Ill. 1996)).
In LG Display Co., the court concluded that the phrase “joined by hot bar
soldering” was not a process limitation, but rather described the structural
relationship between a first and second circuit board. Id. at 446. This structural
relationship was essential to the patentability of the invention. Id. The court thus
construed the phrase to mean the “first and second printed circuit boards are joined
by solder material.” Id. In R2 Med. Sys. Inc., the court interpreted the phrase “a
quantity of stannous chloride affixed to at least a portion of said tin” to refer not to
the process of affixing the stannous chloride, but the result of that process, i.e. the
structural relationship between the stannous chloride and the tin plate. 931 F.
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Supp. at 1424.
These cases stand for the principle that where a term in an
apparatus claim implicates a process, the court should interpret the term, if it can,
as a structural limitation. That is the appropriate approach in this case. Simply
because a claim has “functional attributes does not change the fact that the claim
recites a structural component, albeit one possessed with certain understood
characteristics.” Miken Composites, L.L.C. v. Wilson Sporting Goods Co., 515
F.3d 1331, 1337-38 (Fed. Cir. 2008). The terms “gunite” and “shotcrete” should
be applied as adjectives to specifically describe the structural nature of the layer of
concrete.
Thus, I construe the phrase “a layer of concrete applied as gunite or
shotcrete” as “a layer of gunite or shotcrete concrete.”
E. “WIRE FASTENERS.”
Claims 1 and 2 both require that the wire panels be “assembled in side-byside relationship with wire fasteners.” (’231 patent, col. 6, ll. 66-67; col. 7, ll. 3233.) Strata and Titan argue that this term should be construed to mean “fasteners
made of wire.” Sisk and PMR assert that no construction is necessary but in fact
argue for the court to construe the term to mean “fasteners for wire.” Both sides
argue that their interpretation is an application of the ordinary meaning of the term.
Careful inspection of both the claims and the specification indicates that the
proper construction of the term “wire fasteners” is “fasteners made of wire.” The
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specific fasteners at issue are those used to connect the wire grids of the panels to
one another in a side-by-side fashion to form the walls of the ventilation structure.
It would be unnecessary to specify that these fasteners were for wire when the
claims specifically state that the fasteners are used to attach the wire grids of the
panels. See Digital-Vending Servs. Int’l, LLC v. Univ. of Phx., Inc., 672 F.3d 1270,
1275 (Fed. Cir. 2012) (quoting the “well-established rule that claims are
interpreted with an eye toward giving effect to all terms in the claim.” (citation and
internal quotation marks omitted)).
Sisk and PMR argue that the specification shows that the term is not limited
to fasteners made of wire because it states, “Rebar . . . is installed at spaced
intervals in panels . . . forming deck . . . and secured to the adjacent wire grid with
suitable fasteners such as a wire tie.” (’231 patent, col. 5, ll. 36-38.) They contend
that the use of “suitable fasteners” here shows that the term “fasteners” in the
claims is not limited to those made of wire.
However, this passage of the
specification actually undermines their argument. The claims themselves do not
state that the panels can be connected with “suitable fasteners.”
They state
specifically that the panels must be connected with “wire fasteners.” If any kind of
suitable fastener was appropriate, then the claims would have used the term
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“suitable fasteners” as it was used in the specification. 7 In addition, this passage of
the specification is not addressing the problem of attaching the wire grids of the
panels together. It is addressing the problem of attaching the rebar in the overcast
to the wire grids. It remains a fact that in claiming the structure for attaching the
wire grids of the panels in a side-by-side formation, the patentee chose to limit the
type of fasteners to “wire fasteners.”
The same response applies to Sisk and PMR’s argument that the
specification’s reference to a “plurality of connectors” somehow changes the
meaning of the term “wire fasteners” in the claims. (See ’231 patent, col. 4, ll. 5455.) It was certainly possible for the patentee to use the general term connectors if
that was appropriate to the claimed invention, as indicated in Claims 6 and 11.
Each of these claims describes a seam between the side-by-side panels which is
reinforced with a strip of mesh, “said strips attached to the grids with connectors.”
(’231 patent, col. 8, ll. 14-15; ll. 40-41.) However, Claims 1 and 2 require the
specific “wire fasteners” to fasten the panels in their side-by-side configuration. It
would be improper to construe the term as broader than it is.
7
Sisk and PMR concede that the term “wire tie,” as used in the specification, does
mean a tie made of wire. (Sisk and PMR Resp. Claim Constr. Br. 17 n.7.)
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F. “INSULATION CORE.”
Claims 1 and 2 both describe each panel as “having first and second spaced
apart wire grids with an insulation core.” Strata and Titan contend that the term
“insulation core” should be construed as “a material that retards the passage of
heat, as compared to a corresponding thickness of concrete.” (Statra Opening
Claim Constr. Br. 3.) Sisk and PMR argue that the term should be construed as
“an insulating material between the first and second wire grids, such as a foamed
polymer.” (Sisk and PMR Opening Claim Constr. Br. 9.)8
I find that the term “insulation core” should be construed as “a material
between the first and second spaced-apart wire grids that retards the passage of
fire, smoke, and heat.” 9 This construction is based, for the most part, on the
ordinary meaning of insulation as determined by reference to a technical
dictionary. “Insulation” is defined in the building context as “[m]aterial used in
walls, ceilings, and floors to retard the passage of heat and sound.” McGraw-Hill,
Inc., Dictionary of Scientific and Technical Terms 759 (1976). The term insulation
core is not defined in the patent and, for the most part, the dictionary definition
8
The parties essentially concede that there is no substantive dispute over the
meaning of the word “core.”
9
Although it may be that the meaning of “insulation core” is obvious and thus
does not require construction, the parties do dispute the meaning and therefore, to prevent
any confusion to the jury, it is best for the court to construe the term. See O2 Micro Int’l
Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360-62 (Fed. Cir. 2008).
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provides an adequate construction. See Lazare Kaplan Int’l, Inc. v. Photoscribe
Techs., Inc., 628 F.3d 1359, 1373 (Fed. Cir. 2010) (“As we explained in Phillips,
courts are free to consult dictionaries and may . . . rely on dictionary definitions
when construing claim terms, so long as the dictionary definition does not
contradict any definition found in or ascertained by a reading of the patent
documents.” (citation and internal quotation marks omitted).
However, because the specification gives some additional meaning to the
use of the term insulation in this particular context, I have adjusted the construction
as necessary. See Phillips, 415 F.3d at 1316 (“[O]ur cases recognize that the
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.”). For example, because problem of retardation
of sound is irrelevant in this particular context, the court will not include that
function in this construction. See Anderson v. Int’l Eng’g & Mfg., Inc., 160 F.3d
1345, 1348 (Fed. Cir. 1998) (“A word describing patented technology takes its
definition from the context in which it was used by the inventor.”).
In addition, the specification indicates that the primary purpose of the
insulation is to enhance the invention’s resistance to fire and smoke, and,
accordingly, heat. The specification states, “It is also an object [of the present
invention] to provide a ventilation structure which is economical to make and fire
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resistant.” (’231 patent, col. 1, ll. 64-65.) In the description of the insulation core,
the specification states that “good results” have been obtained using polystyrene
foam “as this material has excellent flame spread and smoke ratings.” (’231
patent, col. 3, ll. 62-65.) The specification also states, “Panels [meaning the
structure including the insulation core] having a layer of concrete . . . may be
designed to have a three-hour fire resistance.” (’231 patent, col. 4, ll. 10-11.)
Construction of the term insulation as a material that retards the passage of fire,
smoke and heat reflects the particular purpose of insulation in this invention. See
Phillips, 415 F.3d at 1315 (“[T]he specification ‘is always highly relevant to the
claim construction analysis. Usually, it is dispositive; it is the single best guide to
the meaning of a disputed term.’” (citing Vitronics Corp. v. Conceptronic, Inc., 90
F.3d 1576, 1582 (Fed. Cir. 1996)).
Sisk and PMR’s suggestion that the construction include the example of a
foamed polymer is unnecessary and does nothing to delineate the “outer reaches of
the claim term.” Digital-Vending Servs. Int’l., LLC, 672 F.3d at 1274. Both the
specification and the claims show that the insulation may be polystyrene but the
addition of the clause adds nothing to the claims.
Strata and Titan argue that the construction should require the insulation to
retard the passage of heat “as compared to a corresponding thickness of concrete.
They argue that such a construction reflects the common sense understanding that
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insulating material would have to retard heat and sound better than the concrete in
the context of the structure. However, Strata and Titan’s argument is not supported
by the specification.
The specification states that “Good results have been
obtained when insulation core . . . is 2½ inch thick and a polystyrene foam with a
minimum density of 0.9 pounds per cubic foot as this material has excellent flame
spread and smoke ratings.” (’231 patent, col. 3, ll. 62-65.) This passage specifies
a possible thickness and density for the insulation but does not contain any
corresponding reference to the concrete.
V
For the foregoing reasons, it is ORDERED that the disputed terms of the
’231 patent are properly construed as follows:
1. The preambles of Claims 1 and 2 state limitations on the claims;
2. The whereby clauses of Claims 1 and 2 do not state limitations on the
claims;
3. “Concrete” means “concrete”;
4. “A layer of concrete applied as gunite or shotcrete” means “a layer of
gunite or shotcrete concrete”;
5. “Wire fasteners” means “fasteners made of wire”; and
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6. “Insulation core” means “a material between the first and second spacedapart wire grids that retards the passage of fire, smoke, and heat.”
ENTER: June 8, 2012
/s/ James P. Jones
United States District Judge
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