Iqsar LLC v. Wendt Corp.

          OPINION AND ORDER CONSTRUING CLAIMS

          MARCIA S. KRIEGER SENIOR UNITED STATES DISTRICT JUDGE

         THIS MATTER comes before the Court pursuant to the parties' Joint Motion (# 120) for determination of disputed claims and the associated briefing (# 114, 117, 118) and supporting materials^[1]; the Defendant's (“Wendt”) Motion to Exclude the Opinions of Michael Nranian^[2] (#108)

         , the Plaintiff's (“Iqasr”) response (# 112), and Wendt's reply (#113); Wendt's Motion to Supplement^[3] (# 123) its claim construction briefing, Iqasr's response (# 124), and Wendt's reply (# 128) ; Wendt's Motion to Supplement (# 130) its invalidity contentions, Iqasr's response (#138, 139), and Wendt's reply (# 142, 144); and motions by both parties to restrict (# 150, 153) public access to certain filings.

         FACTS and JURISDICTION

         Iqasr is the owner of U.S. Patent No. 9, 132, 432 (“the ‘432 Patent” or simply “the patent”), which describes “Isotropic Quantization Sorting Systems of Automobile Shredder Residue to Enhance Recovery of Recyclable Materials.” More simply, the invention describes using various methods - primarily air streams and wind tunnels -- to sort “automobile shredder residue” which results when junked automobiles are shredded for disposal. The patent's goal is to enhance the ability of recyclers to reclaim economically-valuable quantities of various non-ferrous metals, glass, rubber, plastics, and other materials or recycling, a task which often requires the removal of a common, non-recyclable substance known as “magnetic fuzz.” Wendt is a competitor in the industry of manufacturing automobile recycling equipment. Iqasr alleges that in 2013, under the false pretense of potentially entering into a licensing arrangement, Wendt representatives toured Iqasr's facilities and examined Iqasr's equipment that embodied the ‘432 patent. Iqasr further alleges that, despite being informed that the equipment was patented, Wendt proceeded to incorporate aspects of the ‘432 patent into Wendt's own equipment. Based on these allegations, Iqasr asserts a single claim for infringement of the ‘432 patent. The Court exercises jurisdiction pursuant to 28 U.S.C. §1331.

         A. Claim construction

         The primary issue before the Court is construction of certain disputed terms pursuant to Markman v. Westview Instruments, 517 U.S. 370 (1996). The parties' Joint Claim Construction Chart (# 98) identifies 11 terms requiring construction, although the parties agree on the appropriate construction of 4 of those terms, ^[4] leaving 7 in dispute.

         1. Claim construction generally

The fundamental purpose of a patent is to give notice to others of that in which the inventor claims exclusive rights. Oakley Inc. v. Sunglass Hut International, 316 F.3d 1331, 1340 (Fed. Cir. 2003). Thus, the focus of claim construction is ascertaining how a reasonable competitor would interpret the actual claim language, not what the inventor subjectively intended the language to claim. Id. at 1340-41. The words used in the patent are evaluated according to their “ordinary and customary meaning, ” as would be understood by a person of ordinary skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc). In some circumstances, the specification may reveal that the inventor specifically - albeit idiosyncratically - defined a term in a way that might differ from the meaning it would otherwise possess. Where the intrinsic record clearly discloses that the inventor resorted to his or her own peculiar lexicography, the Court will give effect to the inventor's unique idiom; however, where the inventor used particular words without giving a clear indication of an intent to endow them with an unusual meaning, the Court will give those words their ordinary and customary meaning in the art, notwithstanding the inventor's subjective intent to invoke a different definition. See e.g. Laryngeal Mask Co. v Ambu, 618 F.3d 1367, 1372 (Fed. Cir. 2010).

         In attempting to give meaning to the inventor's language, the Court “looks to those sources available to the public that show what a person of skill in the art would have understood disputed claim language to mean.” Phillips, 415 F.3d at 1314. Among those sources are: (i) the words of the claims themselves; (ii) the remainder of the patent's specification; (iii) the prosecution history of the patent; (iv) extrinsic evidence concerning relevant scientific principles; (v) the common meanings of technical terms used; and (vi) the state of the art at the time of the invention. Id. Terms must be construed in light of the entirety of the patent, not just in the context of the particular claim(s) they appear in. Id. at 1313. In other words, claim language must be read in conjunction with the more general and descriptive specification portion of the patent; indeed, the specification is often “the single best guide to the meaning of a disputed term.” Id. at 1315. Because the patent is examined as a whole, the Court assumes that claim terms will normally be used consistently throughout the patent, and thus, the meaning of a term used in one claim can illustrate the meaning of that same term used elsewhere in the patent. Id. at 1314.

         As with the specification, evidence of the prosecution history of the patent can also be considered as intrinsic evidence of how the USPTO and the inventor understood the patent. Id. at 1317. The prosecution history reflects “an ongoing negotiation between the PTO and the applicant, ” and can sometimes demonstrate that the inventor limited or disclaimed some portion of a claim. Id. At the same time, because the prosecution history predates the final patent language, the prosecution history “often lacks the clarity of the specification and thus is less useful for claim construction purposes.” Id.

         Extrinsic evidence of disputed terms - that is, “all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises” - can also shed light on the proper construction to be given to those terms, but extrinsic evidence “in general [is] less reliable than the patent and prosecution history in determining how to read claim terms.” Id. at 1318. The court in Phillips articulated a variety of reasons why a court construing a patent should be wary of relying too heavily on extrinsic evidence, and cautions that, while admissible and potentially probative, courts “should keep in mind the flaws inherent in each time of [extrinsic] evidence and assess that evidence accordingly.” Id. at 1318-19.

         2. Particular challenged terms

         Iqasr alleges that Wendt infringed Claims 1-15, 18-20, and 22 of the ‘432 Patent. Of those, Claim 1 is the only independent claim. It claims (with disputed claim terms in bold):

I. A method of separation of automobile shredder residue comprising the steps of:

providing automobile shredder residue as a result from a ferrous sorting recovery system;

introducing said automobile shredder residue into an automobile shredder residue sorting, non-ferrous recovery system; [and]

non-magnetically sorting magnetic fuzz from said automobile shredder residue with said automobile shredder residue sorting, non-ferrous recovery system;

wherein said sorted magnetic fuzz is substantially free of recyclable materials.

         The remaining disputed claim terms are found in Claim 11, 13, and 22. Those claim (with the disputed claim terms in bold):

11. A method of separation of automobile shredder residue according to claim 5 [which differs from claim 1 in that it claims a “wind tunnel sorting system” as the sorting, non-ferrous recovery system] and further comprising the step of flowing vertical air in said wind tunnel sorting system. . .

13. A method of separation of automobile shredder residue according to claim 1 wherein said step of non-magnetically sorting magnetic fuzz . . . comprises the step of non-magnetically sorting separating low susceptance microparticles from said automobile shredder reside with . . . said sorting, non-ferrous recovery system . . .

22. A method of separation of automobile shredder residue according to claim 6 [which incorporates “path directed air sorting”] wherein said step of path directed air sorting . . . comprises the step of vertical path ...