United States District Court, D. Colorado
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 ...