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Road Science, LLC, A Delaware Limited Liability Company v. Telfer Oil Company

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF CALIFORNIA


May 15, 2012

ROAD SCIENCE, LLC, A DELAWARE LIMITED LIABILITY COMPANY, PLAINTIFF,
v.
TELFER OIL COMPANY, D/B/A WINDSOR FUEL COMPANY ET AL., DEFENDANTS.

CLAIM CONSTRUCTION ORDER

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.

0578 patent Abstract.

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.

A. Pulverulent material

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 function of "pulverulent material," which is to thicken the bitumen, in its construction. (ECF 84 at 10-11; Markman Hearing Transcript (MHT) at 19:17-21.)

To determine the proper construction of "pulverulent material," the court must first "look to the words of the [claim itself], both asserted and nonasserted . . . ." Vitronics Corp., 90 F.3d at 1582 (citing Bell Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615, 620 (Fed. Cir. 1995)). Here, the parties agree that this term is not explicitly defined in the claims of the 0578 patent (see ECF 53 at 12; ECF 84 at 10; MHT at 15:15-16:3). Because the meaning of pulverulent material cannot be gleaned from the plain language of claim 1, the court must look next to the specification. Vitronics, 90 F.3d at 1582.

The patent specification "is always highly relevant to the claim construction analysis." Id. Indeed, "it is [] necessary to review the specification to determine whether the inventor" has defined any terms, id., as it is axiomatic that "a patentee is free to be his or her own lexicographer, and thus may use terms in a manner contrary to or inconsistent with one or more of their ordinary meanings." Hormone Research Foundation, Inc. v. Genentech, Inc., 904 F.2d 1558, 1563 (Fed. Cir. 1990) (internal citations omitted). However, the specification cannot be used to either limit or unduly broaden a claim's meaning when the wording of the claim is not susceptible to such limiting or broadening, see Laitram Corp. v. Cambridge Wire Cloth Co., 863 F.2d 855, 865 (Fed. Cir. 1988) (citing SRI Int'l v. Matsushita Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc)), and the court must view any defined terms in the context of the patent as a whole. See, e.g., Vitronics Corp., 90 F.3d at 1582.

Utilizing the specification to understand the patentee's intent is recognized as a "rule of construction . . . [because] the inventor may [] impart[] special meaning to a term in order to convey a character or property or nuance relevant to the particular invention." See Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998). Thus, "[w]hen the meaning of a term is sufficiently clear in the patent specification, that meaning shall apply." Id. (citing Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1388 (Fed. Cir. 1992); Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984)). "Usually [the specification] is dispositive; it is the single best guide to the meaning of a disputed term." Vitronics, 90 F.3d at 1582.

Here, the parties agree that "pulverulent" is a unique term. (E.g.,ECF 84 at 11-12.) Thus, it is particularly important to focus on the definition provided in the specification. See Vitronics, 90 F.3d at 1582 ("[A] patentee may choose to be his own lexicographer . . . as long as the special definition of the term is clearly stated in the patent specification or file history.") (citations omitted). The specification of the 0578 patent provides that "pulverulent material may consist of stone powder or fine sand . . . ," and pulverulent material is later referred to as "stone powder or the sand," and "stone powder (or fine sand) . . . ." 0578 patent at Col. 5:27-28, 9:31, 9:40.

The patentee's use of the term "consist" in the specification is significant because it is a limiting term. See, e.g., In re Gray, 53 F.2d 520 (CCPA 1931); accord Concordance Corp. v. Amazon.com, 2011 WL 4431138, at *10 (Fed. Cir. 2011) (holding a district court properly construed a term when it found a patentee's use of the term "consists" to be limiting). Defendants argue that the specification provides a clear, limited definition of pulverulent. (See ECF 84 at 10-13.) Plaintiff, instead, focuses on the patentee's use of the word "may," arguing that the definition provided for pulverulent is non-limiting. (ECF 53 at 12; ECF 88 at 15-16.) Plaintiff's argument is not grounded in any applicable precedent; indeed, plaintiff does not point the court to any authority to support its argument regarding the term "may." (Id.) The two other references to "pulverulent material" in the patent specification refer to it only as "stone powder" or "sand." 0578 patent at Col. 5:27-28, 9:27-29. Additionally, although the 0578 patent later discusses the function of pulverulent material as "to thicken the adhesive layer so that loose chips adhere together in a thicker layer," this description is not a necessary part of the definition of the disputed term because it is not referenced anywhere else, and it was not included with the initial description of "pulverulent." See Vitronics, 90 F.3d at 1582; 0578 patent at Col. 5:27-28, 9:31, 9:40. Thus, plaintiff's argument that the definition of pulverulent should include "and/or equivalent thickening material" (ECF 53 at 12), and defendants' argument that it should include a mention of its function "to thicken the bitumen" (MHT at 19:17-21), both are unpersuasive.

The court finds that a person skilled in the art of paving, at the time of the 0578 patent application, would understand the definition provided for pulverulent material in the specification "to be clear and complete enough . . . to make and use it." Vitronics, 90 F.3d at 1582. Therefore, the court construes the term pulverulent to mean "stone powder or fine sand."

B. Chips

Both parties rely on the specification and extrinsic evidence to support their proffered constructions of the disputed term chips, found in the phrase in claim 1, "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." 0578 patent at Col. 11:63-66. Plaintiff argues the specification provides non-limiting examples of "chips," and accordingly, the term should be construed as "solid materials, for example, crushed rock, recycled road surface material (i.e., millings) and/or other equivalent materials, with or without sand, within the range of particle sizes used to construct road surfaces." (ECF 53 at 13-14.) Defendants argue that the specification provides a specific meaning for "chips," which excludes certain materials, and therefore the term should be construed as "a collection of crushed rocks that are similar rather than various particle sizes. Chips are larger than and do not include sand or sand-sized particles." (ECF 84 at 13-14.)

First, the parties agree that "chips" is not defined in claim 1. (See ECF 53 at 13-14; ECF 84 at 13-14). Turning to the specification, see Vitronics, 90 F.3d at 1582, plaintiff argues that several portions of the 0578 patent provide non-limiting examples of the disputed term, while defendants argue that the patent language clarifies what "chips" are not. Importantly, the specification provides that the claimed method "can be implemented regardless of the particle size of the loose chips used to form the coating, within the limit of the particle sizes usually used to produce coatings according to prior art." 0578 patent at Col. 11:33-37. In the very next paragraph, the chips are referred to as "crushed rock loose chips." Id. at 11:38.

Although plaintiff argues that the specification does not exclude sand-sized particles from the term "chips" (ECF 53 at 14), defendants' argument that the 0578 patent provides examples of what are not chips is persuasive. (See ECF 84 at 13.) Indeed, throughout the specification, various materials are discussed separately from "chips," including aggregates, sand, fine sand, stone powder, and millings. (Id. at 19, citing 0578 patent at Col. 5:59-67, 7:19-43, 10:19-28); see also Multiform Desiccants, Inc., 133 F.3d at 1477. However, in order to properly construe the disputed term, the court still must look to extrinsic evidence because the specification explicitly references prior art to define "chips," but does not provide further clarification. E.g., 0578 patent at 1:13-29, 11:33-37; accord Gart v. Logitech, Inc., 254 F.3d 1334, 1340 (Fed. Cir. 2001) (citations omitted) (noting that extrinsic evidence "may be accepted by the court to enhance its understanding of the technology").

Plaintiff argues that the declaration submitted by its expert establishes that various particle sizes, including sand, "had historically been used in aggregates in the production of road surface coatings." (ECF 53 at 17, citing King. Decl. ¶¶ 11-13.) However, this interpretation contradicts the specification here, which treats sand and chips differently, see 0578 patent at Col. 5:59-67, 7:19-43, 10:19-28, and it is well-established that "extrinsic evidence cannot be used to contradict" the claim language. See Gart, 254 F.3d at 1340 (citations omitted). Defendants present evidence that a skilled artisan at the time of the 0578 patent application's submission would have understood "chips" to be crushed rocks of substantially single-sized gradation, and plaintiff does not offer any further evidence to rebut this. (Compare ECF 84 at 14-18, citing Hicks Decl., with ECF 88 at 17-29.) Therefore, the court finds that a person skilled in the art of paving would find chips to mean "crushed rocks of substantially single-sized gradation, which are distinct from aggregates, sand, fine sand, stone powder, and millings," at the time the 0578 patent application was filed. In so construing "chips," the court further finds that the statement within the specification regarding other materials that may be used to produce coatings may be helpful to plaintiff at the infringement stage, but cannot be used to expand the meaning of chips. See Laitram, 863 F.2d at 865 (citing SRI Int'l v. Matsushita Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc)) (noting it is inappropriate to either limit or unduly broaden a claim's meaning when the word of the claim is not susceptible to such limiting or broadening).

C. Layer of aggregates, comprising loose chips covered with a pasty mixture of bitumen and pulverulent material

The parties submit different constructions for the phrase "layer of aggregates, comprising loose chips covered with a pasty mixture of bitumen and pulverulent material," found in claim 1. 0578 patent at Col. 11:63-66. Plaintiff submits this phrase should be construed as a "layer of aggregates, including but not limited to, loose chips (with or without sand) covered with a pasty mixture which includes, but is not limited to, bitumen and pulverulent material, where the bitumen, pulverulent material and sand do not fill all the gaps in the layer of aggregates," because the phrase is "virtually unrestricted by the claims and the specification" of the 0578 patent; in particular, the layer of aggregates phrase "uses the word 'comprising' as a transition to the list of components." (ECF 53 at 22-23). Defendants propose the phrase be construed as a "layer of loose chips that are covered with a pasty mixture of bitumen and pulverulent material, also called 'dressed aggregates.' This is distinguished from bituminous coated products, also known as hot mix asphalt, which is a mixture of bitumen, aggregates, one or more sands and a pulverulent material (e.g. 'sands' meaning natural sands or sand-sized particles)." (ECF 84 at 22.) Defendants argue their construction comports with the specification and that plaintiff's proposed construction is improper because it includes material clearly disclaimed during the prosecution of the 0578 patent. (Id.at 22-27.)

Because, as the parties agree, the disputed phrase is not defined in claim 1, the court must turn to the specification. See Vitronics, 90 F.3d at 1582. As with "pulverulent material," the disputed phrase "layer of aggregates, comprising loose chips covered with a pasty mixture of bitumen and pulverulent material," is defined in the 0578 patent specification. 0578 patent at Col. 5:59-65; see Multiform Desiccants, Inc., 133 F.3d at 1477. The patent-in-suit provides that the layer of aggregates "consisting of loose chips covered with bitumen and mixed with pulverulent material, may hereinafter be called dressed aggregates in order to distinguish them from bituminous coated products which form an amorphous mass consisting of a mixture of bitumen, aggregates, one or more sands and a pulverulent material . . . ." 0578 patent at Col. 5:59-65.

Defendants argue that even though the disputed phrase contains the word "comprising," the specification makes clear that the layer of aggregates at issue consists only of the materials they list in their proposed construction. (ECF 84 at 24-25.) Indeed, as noted by defendants, the patentee repeatedly describes the layer of aggregates as "consisting" of loose chips covered with bitumen and pulverulent material, which evidences the inventor's intent to limit the composition of the layer of aggregates. (Id. at 23, citing 0578 patent, Abstract and Col. 1:8-10, 3:9-12, 3:30-32, 5:27-30, 5:47-53, 5:59-63, 9:25-30.)

Applicable precedent makes clear that a patentee cannot use the word "comprise" in a claim to expand the scope of his patent to include material that has otherwise been expressly disclaimed. See Cias, Inc. v. Alliance Gaming Corp.,504 F.3d 1356, 1361-63 (Fed. Cir. 2007); Boss Control, Inc. v. Bombadier, Inc., 410 F.3d 1372, 1379 (Fed. Cir. 2005). Thus, plaintiff's argument that the court most focus on the word "comprise" in claim 1 is unpersuasive. The court must view any defined terms in the context of the patent as a whole. Here, the repeated use of the word "consist," coupled with the patentee's clear effort to distinguish his invention from prior art, leads the court to conclude the definition provided in the specification for the disputed phrase is dispositive. See Vitronics, 90 F.3d at 1582; Multiform Desiccants, Inc., 133 F.3d at 1477 ("When the meaning of a term is sufficiently clear in the patent specification, that meaning shall apply.") (other citations omitted).

Thus, the court finds that a skilled artisan, in reading the 0578 patent at the time the application was filed, would understand that the patentee defined the disputed phrase in the specification, in an attempt to distinguish the claimed technology from prior art. See Vitronics, 90 F.3d at 1582. Accordingly, layer of aggregates, comprising loose chips covered with a pasty mixture of bitumen and pulverulent material is construed as "layer of loose chips that are covered with a pasty mixture of bitumen and pulverulent material, also called 'dressed aggregates.' This is distinguished from bituminous coated products, also known as hot asphalt mix, which is a mixture of bitumen, aggregates, one or more sands and a pulverulent material."

D. Compacting

The parties dispute the term compacting, found within the phrase"compacting

said layer of aggregates against said layer of bituminous liquid binding material." 0578 patent at Col. 11:67-68. Plaintiff submits that the disputed term should be construed to mean "pressing by the finishing table or equivalent equipment of an integrated paving machine to improve adhesion and binding" (ECF 53 at 28-29), and defendants submit that "compacting" should mean "compressing to embed chips, to immediately fix them so well that rejection, whether operational or postponed, is prevented, to increase density and reduce air voids, and to improve adhesion to existing pavement, thereby producing a surface coating suitable for vehicular traffic." (ECF 84 at 28). Although the parties offer different constructions, both submit that compacting should be construed to include one if its functions: "to improve adhesion." (See ECF 84 at 29 (citing 0578 patent at Col. 1:20-23.))

Again, the parties agree that the disputed phrase is not defined in claim 1, so the court must turn to the specification. See Vitronics, 90 F.3d at 1582. Plaintiff argues that the specification makes clear that compacting is completed by a finishing table. (ECF 53 at 31.) Instead, however, the specification provides that the "spreading and compacting operations are performed in succession by a spreader . . . it being necessary for this method to make it possible to avoid rejections of loose chips . . . ." 0578 patent at Col. 3:17-24. None of the plaintiff's citations supports its assertion that compacting must be completed with an integrated paver. (Compare ECF 53 at 31 with 0578 patent.) Moreover, as pointed out by defendants at the Markman hearing, claim 1 is a method claim; therefore, requiring use of a finishing table is improper when it is not clearly called for in the disputed claim.

Thus, the specification makes clear that compacting serves to "improve adhesion" and "avoid rejections." See 0578 patent at Col. 3:17-24; 1:20-23; accord Vitronics, 90 F.3d at 1582. While defendants urge the court to consider extrinsic evidence in construing the disputed term, the court finds it unnecessary to do so because the language of the specification is "sufficiently clear" in defining the disputed term, compacting. See Multiform Desiccants, Inc., 133 F.3d at 1477; Vitronics, 90 F.3d at 1582 ("[The specification] . . . is the single best guide to the meaning of a disputed term."). Accordingly, the court construes compacting to mean "compressing to avoid rejection and to improve adhesion."

E. Compacting said layer of aggregates against said layer of bituminous liquid binding material

Plaintiff and defendant offer the same respective constructions for the phrase "compacting said layer of aggregates against said layer of bituminous liquid binding material," as they did for the term "compacting." (See ECF 47-2 at 6-8.) Because the specification and the extrinsic evidence provided are directed at the term "compacting," the court concludes only that the term, and not the entire disputed phrase, requires construction. Accordingly, the court declines to provide further construction of the phrase "compacting said layer of aggregates against said layer of bituminous liquid binding material," as the construction of the disputed term compacting resolves any ambiguity in the disputed phrase. See U.S. Surgical Corp., 103 F.3d at 1568; Phillips, 415 F.3d at 1313.

F. Performed

Defendant asks the court to construe the next term, performed, which is found within the phrase in claim 1, "wherein said steps of spreading said layer of binding material, spreading said layer of aggregates and compacting said layer of aggregates are performed successively along a particular direction of advance within a period of five seconds or less for any given portion of said surface coating." 0578 patent at Col. 12:1-6. Plaintiff argues no construction is necessary, as this term is used in accordance with its plain meaning. (ECF 53 at 33; ECF 88 at 45-47.) Defendants argue that the term "performed" should be construed to mean "carried through, brought to completion, or accomplished." (ECF 84 at 33.)

The court finds it unnecessary to construe the term performed, as it is used in accordance with its plain meaning in claim 1. See U.S. Surgical Corp., 103 F.3d at 1568; Phillips, 415 F.3d at 1313. Defendants are asking this court to incorporate part of the phrase in which "performed" is found into a definition of the term itself. The phrase containing "performed" states that the steps of the claimed process are "performed . . . within a period of five seconds or less . . . ." 0578 patent at Col. 12:1-6. As the Federal Circuit has observed: "Claim construction is a matter of resolution of disputed meanings and technical scope, to clarify and when necessary to explain what the patentee covered by the claims, for use in the determination of infringement. It is not an obligatory exercise in redundancy." U.S. Surgical Corp., 103 F.3d at 1568. The court declines to import a special meaning into the disputed term.

G. Wherein said steps of spreading said layer of binding material, spreading said layer of aggregates and compacting said layer of aggregates are performed successively along a particular direction of advance within a period of five seconds or less for any given portion of said surface coating

The parties offer similar constructions for the disputed phrase "wherein said steps of spreading said layer of binding material, spreading said layer of aggregates and compacting said layer of aggregates are performed successively along a particular direction of advance within a period of five seconds or less for any given portion of said surface coating." 0578 patent at Col. 12:1-6. Plaintiff submits the phrase should be construed to mean "the three steps of the claimed process -- (I) spreading the bituminous liquid binding material, (ii) spreading the layer of aggregates (referred to in claim 1) and (iii) pressing said layer of aggregates against the layer of bituminous liquid binding material by the finishing table or equivalent equipment of the integrated paving machine performing the process -- are performed successively along a particular direction of advance within a period of 5 seconds or less for each point of the surface coating being produced." (ECF 53 at 33-35.) Defendants offer the following meaning: "the three steps of the claimed method -- spreading said layer of binding material, spreading said layer of aggregates and compacting said layer of aggregates -- are performed within a period of five seconds or less, thereby producing a surface coating that is suitable for vehicular traffic for any given portion of the surface coating being produced without the need for any further treatment." (ECF 84 at 35-36.)

Each party also seeks to include language in the construction of the disputed phrase that this court has already declined to accept, as set forth above. Specifically, plaintiff argues the court must clarify that the compacting portion of the claimed method means "pressing said layer of aggregates against the layer of bituminous liquid binding material by the finishing table or equivalent equipment of the integrated paving machine performing the process." (ECF 53 at 33-35.) Defendants argue the claimed method, once completed, produces "a surface coating that is suitable for vehicular traffic for any given portion of the surface coating being produced without the need for any further treatment." (ECF 84 at 35-36.)

In light of the court's construction of the disputed term compacting, and the court's finding that performed is used in accordance with its plain meaning in the 0578 patent, it is unnecessary to construe the disputed phrase. See U.S. Surgical Corp., 103 F.3d at 1568; Phillips, 415 F.3d at 1313. Doing so would be engaging in "an obligatory exercise in redundancy." U.S. Surgical Corp., 103 F.3d at 1568. The parties' incorporation of their proposed construction of other disputed terms into the phrase at issue provides a further basis for finding that the phrase need not be construed. Accord id. For these reasons, the court finds the phrase "wherein said steps of spreading said layer of binding material, spreading said layer of aggregates and compacting said layer of aggregates are performed successively along a particular direction of advance within a period of five seconds or less for any given portion of said surface coating," is used in accordance with its plain meaning.

H. Wherein said layer of binding material contains at least 11 percent and no more than 89 percent by weight of the total quantity of bitumen present in said surface coating

In their Joint Claim Construction and Prehearing Statement, the parties offered slightly different constructions of the phrase wherein said layer of binding material contains at least 11 percent and no more than 89 percent by weight of the total quantity of bitumen present in said surface coating ("11--89 percent phrase"). (ECF 47-2 at 12.) However, defendants concede in their claim construction brief that the difference between the parties' proffered constructions is not "important in light of the prior art and accused processes in this action," and agree to Road Science's proposed construction. (ECF 84 at 40-41.) Subsequently, the parties submitted a stipulation, setting forth the following proposed construction for the 11--89 percent phrase (which is the construction originally offered by defendant):

This phrase defines a required value range (11 to 89 %) for the quantity of bitumen contained in the layer of bituminous liquid binding material compared, by weight, to the total quantity of bitumen contained in the entire surface coating. The value expressed by this phrase is derived from a calculation, supported by plain meaning, as follows. If X = the weight of the bitumen in the layer of bituminous liquid binding material, and X Y = the weight of the total quantity of bitumen present in the entire surface coating, the calculated percentage value is expressed by the equation: X/(X). Thus, this claim phrase defines the range of X and Y values such that X divided by the sum of X plus Y yields a value from 0.11 to 0.89 (i.e., 11 to 89 percent). (ECF 100.)

As noted above, a court need not adopt a proposed construction of a term or phrase when the parties have stipulated to it, see Pfizer, Inc., 429 F.3d at 1376, as the court has an independent obligation to properly construe any disputed terms. See Level One Communications, Inc., 987 F. Supp. at 1195. Again, however, a court generally "accepts parties' stipulations to the definition of a phrase, unless it appears to be clearly erroneous as a matter of law." Micro Therapeutics, 507 F.Supp.2d at 1080 (noting that "[i]t is in the interest of judicial economy to encourage parties to stipulate to a definition . . . [but] the Court has inherent authority to . . ." reject a proposed construction that is erroneous) (citations omitted).

In this case, the jointly proffered construction is not "clearly erroneous as a matter of law." See id. Instead, it is a mathematical reflection of the language of the specification, which provides that the layer of binding material must contain a defined percentage of bitumen. See Vitronics, 90 F.3d at 1582; Embrex, 216 F.3d at 1347 (quoting Scripps Clinic v. Genentech, Inc., 927 F.2d 1565, 1580 (Fed. Cir. 1991) (overruled on other grounds)). Thus, it is proper for the court to adopt the stipulated definition of the 11--89 percent phrase, and the court finds that a skilled artisan reading the phrase at the time of the invention, would understand it to mean "a required value range (11 to 89 %) for the quantity of bitumen contained in the layer of bituminous liquid binding material compared, by weight, to the total quantity of bitumen contained in the entire surface coating. The value expressed by this phrase is derived from a calculation, supported by plain meaning, as follows. If X = the weight of the bitumen in the layer of bituminous liquid binding material, and X Y = the weight of the total quantity of bitumen present in the entire surface coating, the calculated percentage value is expressed by the equation: X/(X). Thus, this claim phrase defines the range of X and Y values such that X divided by the sum of X plus Y yields a value from 0.11 to 0.89 (i.e., 11 to 89 percent)," as stipulated by the parties. See 0578 patent at Col. 11:5-8, 9-18; accord Constant Compliance, 598 F. Supp. 2d 842 at 847.

IV. CONCLUSION

For the foregoing reasons, it is hereby ORDERED that the undisputed and disputed terms and phrases that require construction are construed as set forth in bold above, and collected in the chart below.

Claim Element Construction

Bituminous Containing bitumen Layer of bituminous liquid binding material Layer of liquid binding material containing bitumen Bitumen A hydrocarbon substance commonly derived from petroleum and often referred to as asphalt Pulverulent material Stone powder or fine sand Chips Crushed rocks of substantially single-sized gradation, which are distinct from aggregates, sand, fine sand, stone powder, and millings Layer of aggregates, comprising loose chips Layer of loose chips that are covered with a covered with a pasty mixture of bitumen and pasty mixture of bitumen and pulverulent pulverulent material material, also called "dressed aggregates."

This is distinguished from bituminous coated products, also known as hot asphalt mix, which is a mixture of bitumen, aggregates, one or more sands and a pulverulent material.

Compacting Compressing to avoid rejection and to improve adhesion Wherein said layer of binding material A required value range (11 to 89 %) for the contains at least 11 percent and no more than quantity of bitumen contained in the layer of 89 percent by weight of the total quality of bituminous liquid binding material compared, bitumen present in said surface coating by weight, to the total quantity of bitumen contained in the entire surface coating. The value expressed by this phrase is derived from a calculation, supported by plain meaning, as follows. If X = the weight of the bitumen in the layer of bituminous liquid binding material, and X Y = the weight of the total quantity of bitumen present in the entire surface coating, the calculated percentage value is expressed by the equation: X/(X). Thus, this claim phrase defines the range of X and Y values such that X divided by the sum of X plus Y yields a value from 0.11 to 0.89 (i.e., 11 to 89 percent)

IT IS SO ORDERED.

20120515

© 1992-2012 VersusLaw Inc.



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