On December 6, 2011, the court conducted a hearing in accordance with Markman v. Westview Instruments, 517 U.S. 370 (1996). John Heil III, Robert Fitz-Patrick, and James Mayo appeared for the plaintiff, and Robert Kramer, David Makman, and Andrea Miller appeared for the defendants. Through this order, the court construes the disputed words and phrases found in claim 1 of the patent-in-suit.
I. FACTUAL AND PROCEDURAL BACKGROUND
Plaintiff Road Science, LLC (Road Science) sued defendants Telfer Oil Company, d/b/a Windsor Fuel Company, Telfer Tank Lines, Inc., Telfer Enterprises, Inc., and Asphalt Service Company (collectively defendants or Telfer) for alleged infringement of claims 1--6 of Road Science's patent, United States Patent No. 5,069,578 (0578 patent). (See ECF 20 (Plaintiff's First Amended Complaint (FAC)), 47.)
The plaintiff's patent involves technology related to asphalt paving and treatment. (ECF 53 at 2; see also 0578 patent background.) Specifically, the 0578 patent claims a process and machine for producing a road surface coating. (Id.) The abstract to the 0578 patent describes the claimed method and device as follows:
The method comprises spreading a layer of bituminous binding material on the surface, spreading at least one layer of aggregates on the layer of binding material, and compacting the layer of aggregates in contact with the layer of binding material. The aggregates consist of loose chips covered with a mixture, which has a pasty consistency, of bitumen and of pulverulent material. The layer of binding material contains at least 11% of the total quality of bitumen used in the coating. The operations of spreading the binding material and the aggregates and of compacting and surfacing the coating are performed in succession within a period of less than 5 seconds, the speed of advance of the site being at least ten meters per minute. An integrated mobile device carrying a bitumen-spraying boom and a finishing table fixed to the rear part of the chassis makes it possible to produce a coating according to the invention using aggregates which are coated with bitumen produced by the device or transported thereby to the rear part of the chassis between the spraying boom and the finishing table.
The device referred to as an "integrated paver" within the 0578 patent is similar to a device that is the subject of a previous French Patent, Patent No. 2,550,248. 0578 patent at Col. 4:4-6. Only the claimed process, a three step process accomplished in 5 seconds and found in claims 1-6 of the 0578 patent, is at issue in this suit. (ECF 53 at 2 n.1.)
The background and invention summary sections of the 0578 patent clarify the claimed method by describing several problems with the paving technology that existed at the time of the application, and the ways in which the proposed technology of the 0578 patent would solve those issues in an efficient manner. See 0578 patent at Col. 1-3. First, at the time of the application, several different machines were used to lay and compact asphalt. Id. at Col. 1:14-23. Additionally, good-quality chips were wasted through "rejection." Id. at Col. 1:24-56. Specifically, prior art required the laying of a quantity of loose chips that was greater than necessary to cover the binding material, because the chips would be lost first when vehicles began traveling on the road, and again with the onset of cold weather. Id. Finally, repairs were accomplished by using a thin layer of binding material, usually "less than 10% of the total quantity of bitumen used," which provided smooth coverage but very little tire adhesion when the road was wet. Id.at Col. 2:44-57.
The dispute in this case allegedly arises out of the termination of an agreement between the parties. See generally First Am. Compl (FAC). According to the operative complaint, the parties entered into a "sublicense agreement," whereby plaintiff authorized defendants to sell or use the process covered by the 0578 patent. FAC ¶ 11. On or around April 23, 2009, defendants' right to use the technology covered by the 0578 patent allegedly ceased. Id. The 0578 patent subsequently expired on July 20, 2010, meaning the alleged infringement period ran from approximately April 23, 2009, to July 20, 2010. Compare id. with ECF 53 at 1 n.1.
II. CLAIM CONSTRUCTION STANDARD
Construction of patent claim terms is a question of law to be determined by the court. Markman v. Westview Instruments, 517 U.S. 370, 387, 390 (1996) (Markman II). The construction exercise is "'a way of elaborating the normally terse claim language in order to understand and explain, but not to change, the scope of the claims.'" Embrex, Inc. v. Service Engineering Corp., 216 F.3d 1343, 1347 (Fed. Cir. 2000) (quoting Scripps Clinic v. Genentech, Inc., 927 F.2d 1565, 1580 (Fed. Cir. 1991) (overruled on other grounds)). The parties identify the words of a claim that are in issue, and the court determines the disputed aspects of the claim construction. See, e.g., Vivid Technologies, Inc. v. American Science & Engineering, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (citing U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997)). The burden of correct interpretation lies with the court. See Level One Communications, Inc. v. Seeq Technology, Inc., 987 F. Supp. 1191, 1195 (N.D. Cal. 1997). Whether an accused device or process infringes should not be considered in the construction exercise. See Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1324 (Fed. Cir. 2003).
In construing a patent claim, "[i]t is well-settled that . . . the court should look first to the intrinsic evidence of record, i.e., the patent itself, including the claims, the specification and, if in evidence, the prosecution history." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (citing Markman v. Westview Instruments, Inc., 52 F.3d 967, 986 (Fed. Cir. 1995) (Markman I), aff'd, 517 U.S. 370 (1996); see also Phillips v. AHW Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) ("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.") (citations and internal quotations omitted)). Disputed claim terms are construed according to "an objective test of what one of ordinary skilled in the art at the time of the invention would have understood the term to mean," in the context of the entire patent. Markman I, 52 F.3d at 986; Phillips, 415 F.3d at 1313.
From time to time, an analysis of the intrinsic evidence will not resolve an ambiguity in a disputed term or phrase. Vitronics Corp., 90 F.3d at 1583. When this occurs, extrinsic evidence, in the form of "'expert and inventor testimony, dictionaries, and learned treatises,'" Phillips v. AWH Corp., 415 F.3d at 1317 (quoting Markman I, 52 F.3d at 980 (other citations omitted)), "may be accepted by the court to enhance its understanding of the technology." Gart v. Logitech, Inc., 254 F.3d 1334, 1340 (Fed. Cir. 2001) (citations omitted). "However, extrinsic evidence cannot be used to contradict the established meaning of the claim language." Id. (citations omitted).
III. CONSTRUCTION OF WORDS AND PHRASES IN CLAIM 1
The parties jointly propose constructions for three terms in claim 1: bituminous, layer of bituminous liquid binding material, and bitumen. (ECF 47-1; ECF 53 at 10-11.) Although a court is not required to accept the parties' proposed construction of a term or phrase, see Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., 429 F.3d 1364, 1376 (Fed. Cir. 2005), "[a]s a general matter, the [c]court accepts parties' stipulations to the definition of a [term or] phrase, unless it appears to be erroneous as a matter of law." Regents of the University of Cal. v. Micro Therapeutics, Inc., 507 F.Supp.2d 1074, 1080 (N.D.Cal. 2007) (citing Atmel Corp. v. Information Storage Devices, Inc., 1998 WL 775115 (N.D. Cal. 1998); LG Electronics v. Q-Lity Computer, Inc., 211 F.R.D. 360, 367 (N.D. Cal. 2002)). In this case, the court finds that the jointly proposed constructions comport with what a person ordinarily skilled in the art of paving would have understood these terms to mean at the time the 0578 patent application was filed. Cf. Constant Compliance, Inc. v. Emerson Process Management Power & Water Solutions, Inc., 598 F. Supp.2d 842, 847 (N.D. Ill. 2009) (quoting Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1323-24 (Fed. Cir. 2008)) (other citations omitted). Accordingly, the court construes bituminous, found within the phrase "spreading a layer of bituminous liquid binding material on the surface," to mean containing bitumen. The court further construes layer of bituminous liquid binding material, contained in the same phrase, to mean layer of liquid binding material containing bitumen. Finally, the court construes bitumen, as used by the inventor in the phrase "spreading a layer of aggregates, comprising loose chips covered with a pasty mixture of bitumen and pulverulent material, over said layer of bituminous liquid binding material," to mean a hydrocarbon substance commonly derived from petroleum and often referred to as asphalt.
Turning to the disputed terms and phrases of claim 1, the court first notes that nothing in the preamble of claim 1 limits the disputed terms and phrases. Cf. Boehringer Ingelheim Vetmedica v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003) ("An intended use or purpose [preamble statement] usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates."). The court construes the terms and phrases identified by the parties as set forth below, after a careful review of the parties' claim construction briefs, including the declarations and exhibits, the technology tutorials submitted by both parties, argument during the Markman hearing, and all applicable statutory and case law.
The first disputed term is found in the phrase "spreading a layer of aggregates,
comprising loose chips covered with a pasty mixture of bitumen and pulverulent material, over said layer of bituminous liquid binding material," in claim 1. 0578 patent at Col. 11:63-66. Plaintiff argues "pulverulent material" is not limited by claim 1 and the specification makes clear that it means "stone powder, fine sand and/or equivalent thickening material." (ECF 53 at 12.) Defendants argue that "pulverulent material" should be construed to mean only "stone powder or fine sand," as set forth in the specification. Defendants also argue that it would be appropriate for the court to clarify the ...