T. JOHN WARD, District Judge.
The Court held a Markman hearing on June 2, 2010. After considering the submissions and the arguments of counsel, the Court issues the following order regarding claim construction:
Four cases have a consolidated Markman hearing involving three patents. In three cases, U.S. Foam, Inc., USF Equipment Services, LTD., and Alden Ozment (collectively "US Foam") have asserted U.S. Patents No. 7,096,965 ("the '965 patent") and 7,104,336 ("the '336 patent") against various defendants.
Asserted Cause
Plaintiff Defendant Patent(s) Number
'965 and '336
US Foam Allied patents 2:07-cv-490
'965 and '336
US Foam Cummins patents 2:07-cv-491
'965 and '336
US Foam On Site patents 2:07-cv-466
On Site US Foam '558 patent 6:08-cv-231
The '965 patent is entitled "Method and Apparatus for Fighting Fires in Confined Areas." The '965 patent was filed on July 16, 2003 and issued on August 29, 2006 to Alden Ozment. The technology described in the '965 patent relates generally to introducing nitrogen to a mixture of foam concentrate and liquid, thereby creating a fire suppressant foam. Applying this "nitrogen expanded foam" to a fire in a confined space smothers the fire. The invention specifies nitrogen as the preferable gas to aerate the foam because oxygen encourages combustion. The '965 patent includes a foam dispenser that further expands the nitrogen-aerated foam and allows fire fighters to use it from a safe distance.
The '336 patent is a continuation-in-part of the'965 patent. The '336 patent discloses additional features, such as using chilled nitrogen and implementing the invention in a self-contained unit.
The '558 patent was filed on February 1, 2001 and issued on January 24, 2006, relates to a method of extinguishing a fire by injecting gas onto the fire using a foam powder or water. The gases disclosed include argon, nitrogen, and carbon dioxide. The '588 patent is not targeted to coal mines and focuses on the composition of the gas. The patent describes using synthetic chemicals to create foam filled with fire-extinguishing gas.
"A claim in a patent provides the metes and bounds of the right which the
To ascertain the meaning of claims, the court looks to three primary sources: the claims, the specification, and the prosecution history. Markman, 52 F.3d at 979. Under the patent law, the specification must contain a written description of the invention that enables one of ordinary skill in the art to make and use the invention. A patent's claims must be read in view of the specification, of which they are a part. Id. For claim construction purposes, the description may act as a sort of dictionary, which explains the invention and may define terms used in the claims. Id. "One purpose for examining the specification is to determine if the patentee has limited the scope of the claims." Watts v. XL Sys., Inc., 232 F.3d 877, 882 (Fed.Cir.2000).
Nonetheless, it is the function of the claims, not the specification, to set forth the limits of the patentee's claims. Otherwise, there would be no need for claims. SRI Int'l v. Matsushita Elec. Corp., 775 F.2d 1107, 1121 (Fed.Cir.1985) (en banc). The patentee is free to be his own lexicographer, but any special definition given to a word must be clearly set forth in the specification. Intellicall, Inc. v. Phonometrics, 952 F.2d 1384, 1388 (Fed. Cir.1992). And, although the specification may indicate that certain embodiments are preferred, particular embodiments appearing in the specification will not be read into the claims when the claim language is broader than the embodiments. Electro Med. Sys., S.A. v. Cooper Life Sciences, Inc., 34 F.3d 1048, 1054 (Fed.Cir.1994).
This court's claim construction decision must be informed by the Federal Circuit's decision in Phillips v. AWH Corporation, 415 F.3d 1303 (Fed.Cir.2005) (en banc). In Phillips, the court set forth several guideposts that courts should follow when construing claims. In particular, the court reiterated that "the claims of a patent define the invention to which the patentee is entitled the right to exclude." 415 F.3d at 1312 (emphasis added) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1115 (Fed.Cir.2004)). To that end, the words used in a claim are generally given their ordinary and customary meaning. Id. The 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. This principle of patent law flows naturally from the recognition that inventors are usually persons who are skilled in the field of the invention. The patent is addressed to and intended to be read by others skilled in the particular art. Id.
The primacy of claim terms notwithstanding, Phillips made clear that "the 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. Although the claims themselves may provide guidance as to the meaning of particular terms, those terms are part of "a fully integrated written instrument." Id. at 1315 (quoting Markman, 52 F.3d at 978). Thus, the Phillips court emphasized the specification as being the primary basis for construing the claims. Id. at 1314-17. As the Supreme
Consequently, Phillips emphasized the important role the specification plays in the claim construction process.
The prosecution history also continues to play an important role in claim interpretation. The prosecution history helps to demonstrate how the inventor and the PTO understood the patent. Phillips, 415 F.3d at 1317. Because the file history, however, "represents an ongoing negotiation between the PTO and the applicant," it may lack the clarity of the specification and thus be less useful in claim construction proceedings. Id. Nevertheless, the prosecution history is intrinsic evidence. That evidence is relevant to the determination of how the inventor understood the invention and whether the inventor limited the invention during prosecution by narrowing the scope of the claims.
Phillips rejected any claim construction approach that sacrificed the intrinsic record in favor of extrinsic evidence, such as dictionary definitions or expert testimony. The en banc court condemned the suggestion made by Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed.Cir. 2002), that a court should discern the ordinary meaning of the claim terms (through dictionaries or otherwise) before resorting to the specification for certain limited purposes. Id. at 1319-24. The approach suggested by Texas Digital—the assignment of a limited role to the specification—was rejected as inconsistent with decisions holding the specification to be the best guide to the meaning of a disputed term. Id. at 1320-21. According to Phillips, reliance on dictionary definitions at the expense of the specification had the effect of "focus[ing] the inquiry on the abstract meaning of words rather than on the meaning of the claim terms within the context of the patent." Id. at 1321. Phillips emphasized that the patent system is based on the proposition that the claims cover only the invented subject matter. Id. What is described in the claims flows from the statutory requirement imposed on the patentee to describe and particularly claim what he or she has invented. Id. The definitions found in dictionaries, however, often flow from the editors' objective of assembling all of the possible definitions for a word. Id. at 1321-22.
Phillips does not preclude all uses of dictionaries in claim construction proceedings. Instead, the court assigned dictionaries a role subordinate to the intrinsic record. In doing so, the court emphasized that claim construction issues are not resolved by any magic formula. The court did not impose any particular sequence of steps for a court to follow when it considers disputed claim language. Id. at 1323-25. Rather, Phillips held that a court must attach the appropriate weight to the intrinsic sources offered in support of a proposed claim construction, bearing in
The Court adopts the following constructions, as agreed to by the parties:
-------------------------------------------------------------------------------------------Disputed term Construction about 0.1% to about 1.0% A range that includes concentrations about 0.1% by Patent `965 Claim 6 volume to about 1.0% by volume. -------------------------------------------------------------------------------------------About approximately Patent `336 Claims 1, 4, 5, 6, 7, 10, 11, 12 Patent `965 Claims 3, 6 -------------------------------------------------------------------------------------------admixture the act of mixing Patent `336 Claim 3 -------------------------------------------------------------------------------------------chilled nitrogen nitrogen that has had its temperature lowered Patent `336 Claim 1 -------------------------------------------------------------------------------------------chilled lowered in temperature Patent `336 Claims 6, 7 -------------------------------------------------------------------------------------------chilled essentially chilled at almost the samesimultaneously time or at the same time Patent `336 Claim 2 -------------------------------------------------------------------------------------------chilling lowering the temperature Patent `336 Claim 1 -------------------------------------------------------------------------------------------dispensed discharged Patent `336 Claims 4, 5, 10, 12 Patent `965 Claims 1, 9, 11, 13 -------------------------------------------------------------------------------------------dispensing discharging Patent `336 Claims 1, 8 Patent `965 Claim 4 -------------------------------------------------------------------------------------------drawing out to remove Patent `965 Claim 10 -------------------------------------------------------------------------------------------flowing stream a fluid or liquid that is moving Patent `336 Claims 1, 9 Patent `965 Claim 4 -------------------------------------------------------------------------------------------flowing stream a fluid or liquid that is flowing Patent `336 Claims 1, 9 Patent `965 Claim 4 -------------------------------------------------------------------------------------------ingress point an entrance Patent `965 Claim 1 -------------------------------------------------------------------------------------------introduction of nitrogen allowing nitrogen to be added Patent `336 Claim 9 -------------------------------------------------------------------------------------------providing at least one providing at least oneingress point entrance. Patent `965 Claim 9 -------------------------------------------------------------------------------------------Ratio of about proportion of approximately Patent `965 Claim 3 -------------------------------------------------------------------------------------------stream a fluid or liquid that is moving Patent `336 Claim 1 Patent `965 Claims 1, 2, 3, 4, 9, 11 -------------------------------------------------------------------------------------------
The parties have not agreed to the constructions of any of the terms in the `558 patent.
---------------------------------------------------------------------------------------------Disputed term US Foam Defendants ---------------------------------------------------------------------------------------------[area] in-volved area that is on fire the [portion ofin fire the mine/sealed portion of the Patent `336 mine/portion of Claim 1, 8 the coal mine] that Patent `965 is burning, which Claim 1, 2, 9, is shown by bore-hole 10,13 temperatures of 90° F or greater ---------------------------------------------------------------------------------------------areas of the portions of the the portion of theconfined area confined area that mine outside thethat are free are not on fire sealed area that isof fire not burning, which is shown by bore-hole Patent `336 temperatures Claim 8 of less than 90° F ---------------------------------------------------------------------------------------------coal mine fire burning of com-bustible the burning of material combustible material, Patent `336 in a coal mine as shown in a Claim 8 coal mine fire by borehole temperatures of 90° F or greater ---------------------------------------------------------------------------------------------fire burning of com-bustible the burning of material combustible material, Patent `336, as shown in a Claims 1, 8 coal mine fire by Patent `965 borehole temperature
Claim 1, 4, 8 of 90° F or greater --------------------------------------------------------------------------------------------- uninvolved areas of the mine the portion of theareas of said shaft that are not mine that is notmine shaft on fire burning, which is shown by borehole Patent `965 temperatures of Claim 9 less than 90° F ---------------------------------------------------------------------------------------------
The parties agree that a "fire" is "the burning of combustible material." Defendants attempt to add an additional limitation that a fire, as used in the claims, is also to be defined by a borehole temperature reading of greater than 90 degrees Fahrenheit. Defendants find their 90-degree limitation from the specification's repeated statements that a fire is considered to be extinguished when the surface temperature is reduced to 90 degrees or below. See `336 patent, 5:52-57; 6:30-35; 9:42-46; 10:53-59; 9:65-10:1; 11:1-4. While that may be true, it tells a person of ordinary skill in the art what it means to extinguish a fire, not what it means for there to be a fire. For example, if a borehole temperature read 95 degrees, but there has never been any burning of combustible material, according to Defendants' proposal, the temperature reading alone would indicate that there was a fire even in the absence of burning. Common sense tells the Court that Defendant's proposed limitation cannot be part of the correct construction. The Court construes "fire" to mean "burning of combustible material."
The Court further adopts the following fire-related constructions.
---------------------------------------------------------------------------------[area] involved in fire area in which there is burning of combustible material ---------------------------------------------------------------------------------areas of the confined area portions of the confinedthat are free of fire area in which there is an absence of the burning of combustible material ---------------------------------------------------------------------------------coal mine fire burning of combustible material in a coal mine ---------------------------------------------------------------------------------uninvolved areas of said areas of the mine shaft inmine shaft which there is no burning of combustible material ---------------------------------------------------------------------------------
----------------------------------------------------------------------------------Disputed term US Foam Defendants ----------------------------------------------------------------------------------extinguishing If construed to be to cause the fire toa fire limiting then, stop burning completely, "ceasing the burning as shown Patent `336 of a fire, in in a coal mine fire Claim 1 whole or in part" by reducing the Patent `965 borehole temperatures Claims 1, 4, 9 of less than 90° F ----------------------------------------------------------------------------------fighting a coal attempting to to cause the burningmine fire cease the burning to stop completely, of a coal mine fire, as shown Patent `336 in whole or in part in a coal mine fire Claim 8 by reducing the borehole temperatures to less than 90° F ----------------------------------------------------------------------------------initiate suppression to begin to cease to begin the processof the burning of a of stoppingthe fire fire the fire from burning Patent `336 Claim 8 ----------------------------------------------------------------------------------
The parties have three main disputes with respect to the "extinguish" terms. First, they dispute whether the preambles containing the word "extinguish" are limiting. Second, they dispute whether extinguishment requires complete cessation of burning, or only partial cessation. Third, the parties dispute whether the surface temperature must be reduced to 90 degrees in order for a mine fire to be extinguished.
"In general, a preamble limits the invention if it recites essential structure or steps, or if it is necessary to give life, meaning, and vitality to the claim. . . . A preamble is not limiting where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention." Vizio, Inc. v. Int'l Trade Com'n, 605 F.3d 1330, 1340 (Fed.Cir.2010) (internal citations and quotations omitted). In dispute are the preambles of claims 1, 4, and 9 of the `965 patent, and claim 1 of the `336 patent. The `965 patent, claims
The next issue for the Court to resolve is whether "extinguishing a fire" requires complete extinguishment, as Defendants contend. Defendants rely on statements in the prosecution history, arguing that the patentee overcame a prior art reference in which "a mine cavity could [not] be completely filled to smother hot spots on the sides and top portions of [a mine] shaft." Amendment, Sept. 1, 2005. This language does not support Defendants' argument. The language merely shows that the invention provided a superior manner of covering and smothering a fire, not that the fire needs to be extinguished completely. Nonetheless, the Court finds support in the specification for Defendant's position. Explaining the problems associated with confined areas, the specification recites, "providing additional combustible material to feed the fire. . . make[s] extinguishing of such a fire, other than letting the fire burn itself out, even more difficult if not impossible." `965 patent, 3:1-3. If a fire need only partially cease burning to be extinguished, "letting the fire burn itself out" is an excessively limited view of available options in the absence of a seal to keep air out of the burning area. A partially extinguished fire that has been allowed to "burn itself out" will refuel if the confined area is opened to permit miners to reenter. Moreover, the quote from the "Mine Fires" book also indicates that extinguishment, as understood by the patentee, must be complete. "[H]igh expansion foams have not yet extinguished a real mine fire." `965 patent, 4:11-12. Certainly some foams had been able to cease at least some burning, i.e., "extinguish" according to U.S. Foam. Upon reading this sentence, one of ordinary skill in the art would understand the invention to be directed toward complete extinguishment, or ceasing the burning of combustible materials in whole. The Court declines to include "in whole or in part" as part of the construction for any of the "extinguish" related terms.
Finally, with respect to the 90-degree limitation, Defendants argue that a fire is only extinguished when the surface temperature is reduced to 90 degrees or lower. Defendants rely on the patentee's pervasive statements throughout the `336 patent that "90 degrees Fahrenheit is the temperature that is accepted as the point at which the fire is considered to be extinguished." `336, 5:52-57. See also `336, 6:30-35; 9:42-46; 10:53-59; 9:65-10:1; 11:1-4. The Court must be careful not to import a limitation from the specification, "[b]ut `the line between construing terms and importing limitations can be discerned with reasonable certainty and predictability if the court's focus remains on understanding how a person of ordinary skill in the art would understand the claim terms.'" ICU Medical, Inc. v. Alaris Medical Systems, Inc., 558 F.3d 1368, 1375 (Fed.Cir.2009) (internal quotations omitted). In light of the repeated statements that a fire is extinguished only if it reaches
Ordinarily, the same claim term appearing in related patents would carry the same meaning. See Boss Indus., Inc. v. Yamaha Motor Corp., 333 Fed.Appx. 531, 536-37 (Fed.Cir.2009) ("[B]ecause each patent-in-suit is derived from the same parent application and shares many common terms with its sister patents, the district court correctly interpreted [the disputed term] consistently across all of the asserted patents.") (citing NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1293 (Fed.Cir.2005)); Omega Eng'g., Inc. v. Raytek Corp., 334 F.3d 1314, 1334 (Fed. Cir.2003) ("[W]e presume, unless otherwise compelled, that the same claim term in the same patent or related patents carries the same construed meaning."). The `336 patent is a continuation-in-part of the `965 patent and, the specifications have significant differences that are material to the Court's construction of "extinguish." The `965 patent makes no mention whatsoever of any temperature limitations, let alone a 90-degree limitation for extinguishment. Reading the `965 patent independently of the `336 patent, a person of ordinary skill in the art would not understand "extinguish," as used in the `965 patent, to require a reduction in temperature to 90 degrees or below. By defining "extinguish" in the `336 patent, the patentee chose to give the continuation-in-part a narrower scope than its parent. This is a rare case where the same claim term in two related patents does not share the same meaning.
What causes the Court concern, however, is the Defendant's introduction of "borehole temperature readings" to the definition of "extinguish." The term "borehole" never appears in the specification and Defendants resort to extrinsic evidence to support the additional limitation. While Defendants may be correct that coal miners customarily check the temperature at the surface of the mine by reading borehole temperatures, there is no support in the intrinsic record for limiting the manner in which miners measure temperature. The Court construes "extinguishing a fire," as used in the `336 patent, to mean "ceasing the burning of combustible material, as shown by mine surface temperatures of 90 degrees Fahrenheit or less." The Court construes "extinguishing a fire," as used in the `965 patent, to mean "ceasing the burning of combustible material." "Fighting a coal mine fire" means "attempting to extinguish a coal mine fire." "Initiate the suppression of the fire" means "to begin extinguishing the fire."
----------------------------------------------------------------------------Disputed term US Foam Defendants ----------------------------------------------------------------------------after it has after it has been after utilizing abeen sealed allowed to be fire proof barrier made firmly closed to confine an area Patent `965 of a coal mine involved Claim 10 in fire ----------------------------------------------------------------------------confined area a site in a coal Interior of a coalof a coal mine mine having normally mine, limited ventilation Patent `336 and limited Claim 8 access for extinquishing a fire ----------------------------------------------------------------------------forming a seal firmly closing or creating an air securing tight fire-proof Patent `965 barrier to confine Claim 9 an area of the coal mine on fire ----------------------------------------------------------------------------poorly An area where the Any confined area,ventilated circulation of fresh including coalarea air is poor. mines, storage tanks, and the like Patent `965 Claim 4 ----------------------------------------------------------------------------
---------------------------------------------------------------------------- seal object that firmly a fire proof barrier closes or secures to confine an Patent `965 area of a coal mine Claim 14 involved in fire ----------------------------------------------------------------------------sealed portion firmly closed or the sealed portion secured portion of the mine that is Patent `336 burning, which is Claims 8, 10,12 shown by borehole temperatures of 90° F or greater ----------------------------------------------------------------------------sealing of a allowing a confined a fire proof barrierconfined area fined area to be to confine an firmly closed or area of a coal mine Patent `336 secured involved in fire Claim 8 ----------------------------------------------------------------------------sealing firmly closing or creating an air securing tight fire-proof Patent `336 barrier to confine Claim 8 an area of the coal mine on fire ----------------------------------------------------------------------------
The parties dispute whether a "confined area" must be sealed and whether a "seal" must be fire-proof or just firmly closed. The patentee gave an express definition for "confined area" in 15 both patents. `965 patent, 2:63-3:3; `336 patent, 3:57-65. Although both patents do not use identical definitions, they are sufficiently similar for the Court to discern the common meaning. The `965 patent defines "confined area" to mean "an area of combustible material that is located at a site having normally limited ventilation and limited access in which combustion by-products can be confined and can pose a threat to personnel attempting to extinguish a fire at the site as well as providing additional combustible material to feed the fire and make extinguishing of such a fire, other than letting the fire burn itself out, even more difficult if not impossible." `965 patent, 2:63-3:3. The `336 patent simplifies the definition: "a site having normally [limited] ventilation and limited access for extinguishing a fire." `336 patent, 3:57-65.
For the "poorly ventilated area" terms, U.S. Foam applies dictionary definitions to create its proposal whereas Defendants propose construing "poorly ventilated area" to be the same as "confined area." A confined area, as defined in the specification, has two characteristics—limited ventilation and limited access. There is no support for requiring that a poorly ventilated area have limited access. US Foam introduces a "fresh air" requirement, though it appears in one of several possible definitions for "ventilate," has no support in the claims or specification. See WEBSTER'S THIRD NEW INTERNATIONAL DICTIONARY OF THE ENGLISH LANGUAGE UNABRIDGED (1993) ("to cause fresh air to circulate through and vitiated or contaminated air to be simultaneously withdrawn from"). The Court construes "poorly ventilated area" to mean "an area where the circulation of air is poor."
The parties dispute whether a seal must be fire proof and air tight. In both the `336 and `965 patents, the patentee says that a seal "must be fire proof and provide a suitable opening to permit the dispensing of foam to the area involved in fire." `965 patent, 3:38-41; `336, 4:58-61. Moreover, as used in the claims, if a seal were not fireproof, then there would be no way to keep an "uninvolved area" of a mine shaft free from fire. See `965 patent,
Defendants also seek to add an air tight limitation, which the Court agrees has support. In Claim 10, the invention adds the step of "drawing out at least a portion of the ambient atmosphere from said area involved in fire after it has been sealed." If the seal had no air tight characteristics, this step could not be completed; whatever air that was drawn out would simply be replaced by air outside of the seal. However, given the irregular surfaces of the walls of a mine, the Court can comfortably conclude that one of ordinary skill in the art would not understand the seal to be perfectly air tight. The Court construes "seal" to mean "a fire proof barrier that is substantially air tight."
The Court further construes the remaining terms involving "seal":
------------------------------------------------------------------------after it has been sealed after it has been closed with a fire proof barrier that is substantially air tight ------------------------------------------------------------------------forming a seal closing with a fire proof barrier that is substantially air tight ------------------------------------------------------------------------sealed portion area behind a seal where the fire is located ------------------------------------------------------------------------sealing closing with a fire proof barrier that is substantially air tight ------------------------------------------------------------------------
-----------------------------------------------------------------------------Disputed term US Foam Defendant -----------------------------------------------------------------------------diffuser/dispenser an apparatus that a device for mixing allows fluid to be nitrogen with apparatus discharged freely stream of liquid through a screen Patent `965 or small holes, and Claims 1, 9 then injects or places the expanded foam on a fire -----------------------------------------------------------------------------diffuser an apparatus that an apparatus that permits substances allows gas to be Patent `965 to spread added through a Claims 1,9 freely screen or small holes -----------------------------------------------------------------------------
As used in the claims, a diffuser is used to add the nitrogen to the foam concentrate (i.e., "introducing a gas comprising nitrogen under pressure to said stream of foam concentrate/liquid mixture by a diffuser/dispenser apparatus"). The specification explains that "[t]he foam is expanded and dispersed through a diffuser/dispenser apparatus that functions to introduce pressurized nitrogen into the water/foam concentrate stream to expand the foam and to dispense the expanded foam." `965, 4:62-65. The Court construes "diffuser" to mean "an apparatus that introduces pressurized nitrogen into the water/foam concentrate stream to expand the foam." The Court construes "diffuser/dispenser apparatus" to mean "an apparatus that introduces pressurized nitrogen into the water/foam concentrate stream to expand the foam and to discharge the expanded foam."
-----------------------------------------------------------------------Disputed term US Foam Defendants ---------------------------------------------------------------------------consisting a gas other than consisting essentiallyessentially of air that includes means a gasnitrogen nitrogen and may containing more include additional than 75% nitrogen Patent `965 gases but does not (Cummins) Claim 4 include additional gases that contain highly combustible substances in sufficient concentrations to support combustion ---------------------------------------------------------------------------gas A gas, other than Any gas containingcomprising air, that includes nitrogen, ineludingnitrogen nitrogen and may air (On include additional Site) Patent `965 gases. Claims 1, 9 ---------------------------------------------------------------------------gas consisting A gas, other than A gas containingessentially of air, that includes mainly nitrogen,nitrogen nitrogen and may substantially with-out include additional oxygen (On Patent `965 gases but does not Site) Claim 4 include additional gases that contain highly combustible substances in sufficient
concentrations to support combustion. --------------------------------------------------------------------------- nitrogen a gas other than nitrogen as describedcontaining air that includes in the `443gas nitrogen and may Patent, Column 2, include additional Line 68 and in the Patent `965 gases but does not `375 Patent, Column Claim 11 include additional 3, Lines 39gases that contain 40 (Cummins) highly combustible substances in sufficient concentrations to support combustion ---------------------------------------------------------------------------
The parties alternately dispute whether the nitrogen that is injected into the foam concentrate mixture can contain oxygen. US Foam seeks to give "gas consisting essentially of nitrogen," "nitrogen containing gas," and "gas comprising nitrogen" equivalent meanings: "a gas, other than air, that includes nitrogen and may include additional gases." US Foam makes a distinction for "gas consisting essentially of nitrogen," by adding the limitation that it does not contain combustible amounts of oxygen. Defendants argue that "gas comprising nitrogen" and "gas consisting essentially of nitrogen" are very different things. Importantly, Defendants contend that "gas comprising nitrogen" can include air, which is 78% nitrogen and contains sufficient oxygen to support combustion. Defendants argue that "comprising" is a broad and open-ended term that can include anything else whereas "consisting essentially of is much narrower and contains very little else. According to Defendants, the patentee knew how to draft narrowly and broadly and chose to do both.
US Foam argues that the patentee expressly disclaimed air as the foam-producing gas. See `965 patent, 4:48-53 ("Conventionally air is used as the gas in forming high expansion foams. However, in view of the need to reduce the oxygen content in the mine at the area involved in the fire, contributing to the oxygen content in the sealed area by the expanded foam is undesirable. Accordingly, a gas consisting essentially of nitrogen is employed as the expanding gas."). In that passage, the patentee describes "gas consisting essentially of nitrogen" as a gas that will not contribute oxygen to the fire. If the foam were to be expanded with air, the substantial concentration of oxygen in the air would "add[] a highly combustible substance to the fire that becomes available to support combustion as the foam breaks down." `965 patent, 4:3-5. The Court construes "gas consisting essentially of nitrogen" and "nitrogen containing gas" to mean "gas containing mainly of nitrogen without other gases in sufficient concentrations to support combustion."
Even though there is no express disclaimer of air for the more broadly-claimed "gas comprising nitrogen," the patentee made clear throughout the specification that the invention does not use air. See `965 patent, 4:3-5; 4:48-53. The Court construes "gas comprising nitrogen" to mean "a gas, other than air, that includes nitrogen and may include additional gases that are not present in sufficient concentrations to support combustion."
------------------------------------------------------------------------------Disputed term US Foam Defendants ------------------------------------------------------------------------------directing said allowing a fluid or injecting or placingstream liquid that is moving the expanded to turn, move, foam on a fire Patent `965 or point undeviatingly Claims 1, 2 or to follow a straight course with a particular destination or object in view ------------------------------------------------------------------------------directing allowing to turn, flowing the nitrogen move, or point undeviatingly aerated liquid Patent `965 or to foam generating Claim 1 follow a straight solution as described course with a particular in the `443 destination Patent, Column 3, or object in view Lines 47-60 and in the `375 Patent,
Column 3, Lines 33-42 ------------------------------------------------------------------------------ directs said allows a mixture Injecting orexpanded of nitrogen and placing on a firefoam fire suppressant foam concentrate/liquid through a. . . mixture boreholethrough said to turn, move,at least one or point undeviatinglyingress point or to follow a straight course Patent `966 through at least Claim 13 one entrance ------------------------------------------------------------------------------directs allows to turn, injected or placed move, or point un-deviatingly on a fire Patent `965 or to Claim 13 follow a straight course with a particular destination or object in view ------------------------------------------------------------------------------dispenser an apparatus that an injector that allows fluid to be places the expanded discharged foam on a fire ------------------------------------------------------------------------------dispensing a discharging a fire Injecting or placingfire suppressant suppressant that a low temperaturecomprising includes a foam nitrogen gasiinga chilled concentrate/liquid fied foam on a firenitrogen expanded mixture gasified sealed in a coalfoam with chilled nitrogen mine and may inelude Patent `336 additional Claim 8 substances ------------------------------------------------------------------------------dispensing a discharging a fire Injecting or placingfire suppressant suppressant comprising a low temperaturecomprising prising chilled nitrogen nitrogen gasi-filedchilled expanded foam on a firenitrogen expanded foam to said sealed in a coalfoam sealed portion of mineto said sealed said confined areaportion of said confined area Patent `336 Claim 8 ------------------------------------------------------------------------------dispensing discharging injecting or placing upon Patent `336 Claims 1, 4 Patent `965 Claim 4 ------------------------------------------------------------------------------
The parties have already agreed that "dispensed" means "discharged" and "dispensing" means "discharging." Defendants equate "directing" with "dispensing" without explanation. Different words are presumed to have different meanings. See Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1369 (Fed.Cir.2007). There is no evidence in the intrinsic record to assist the Court in determining the meaning of direct, so the Court resorts to a dictionary. As used in the claims, "directs" means "to dispatch, aim, or guide along a fixed path." See WEBSTER'S THIRD NEW INTERNATIONAL DICTIONARY OF THE ENGLISH LANGUAGE UNABRIDGED 640 (1993) ("to dispatch, aim, or guide usu. along a fixed path").
Dispenser appears by itself only in claims 11 and 13 of the `965 patent. Claim 11 recites, "wherein said expanded foam fire suppressant is expanded by a dispenser that proportions nitrogen containing gas into a water/foam concentrate stream thereby to initiate expansion of said foam." '965, Claim 11. The dispenser of claim 11 operates exactly as the diffuser/dispenser described in the specification; the apparatus expands and discharges the foam. See `965 patent, 4:62-65. The Court construes dispenser to mean "an apparatus that expands and discharges foam."
----------------------------------------------------------------------------------Disputed term US Foam Defendantschilled nitrogen foam concentrate/liquid to lower the temperature;expanded mix-ture to cool asfoam gasified with compressed nitrogen chilled nitrogen is chilled Patent `336 when released as Claims 1, 2, 3, it expands the 8, 9, 10,12 foam concen-trate/liquid mixture as mixed with chilled nitrogen, as described in the `443 Patent at Column 3, Lines 47-60 and in the `375 Patent, Column 3, Lines 39-41 ----------------------------------------------------------------------------------class A type a foam concentrate readily availablefoam for extinguishing commercial foamingconcentrate fires in-volving agents; foaming ordinary agents used in Patent `336 combustible materials, fire fighting Claim 13 such as (A.F.F.F., high wood, cloth, paper, expansion foam, rubber, as well as protein foam), sulfate many plastic soap, or common dishwashing detergents as described in the `375
Patent, Column 3, Lines 4-10 ---------------------------------------------------------------------------------- expand said increase the volume increase volumefoam concentrate of the foamable by gasification substance Patent `965 Claims 1, 9 ----------------------------------------------------------------------------------expanded a mixture of nitrogen an expanded nitrogenfoam fire suppressant and foam aerated liquid concentrate/liquid foam generating mixture solution as described Patent `965 in the `443 Claims 1, 2, 11, Patent, Column 3, 13 Line 61 thru Column 4, Line 3 and in the `375 Patent, Column 3, Lines 43-62 ----------------------------------------------------------------------------------expanded a mixture of nitrogen foam gasified withfoam and foam a gas or an evaporated concentrate/liquid rated liquid Patent `336 mixture Claim 1 Patent `965 Claims 1, 2, 4, 13 ----------------------------------------------------------------------------------foam a mixture of foam a foamable solutionconcentrate/liquid concentrate and a mixed together non-flammable with a non-flammablemixture liquid fluid Patent `336 Claims 1, 3 Patent `965 Claims 1, 9 ----------------------------------------------------------------------------------foam a foamable a foamableconcentrate substance solution Patent `336 Claims 1, 2, 13, 14 Patent `965 Claims 1, 4, 9 ----------------------------------------------------------------------------------nitrogen expanded mixture of chilled foam gasified withfoam nitrogen and foam lowtemperaturechilled fire concentrate/liquid nitrogen that issuppressant mixture used to extinguish a fire Patent `336 Claim 1 ----------------------------------------------------------------------------------nitrogen expanded a mixture of nitrogen an expanded nitrogenfoam and foam aerated liquidfire suppressant concentrate/liquid foam generating mixture solution as described in the `443 Patent `965 Patent, Column 3, Claim 4 Line 61 thru Column 4, Line 3 and in the `375 Patent, Column 3, Lines 43-62 ----------------------------------------------------------------------------------nitrogen foam concentrate/liquid foam gasified withexpanded mixture nitrogenfoam gasified with nitrogen Patent `336 Claims 1, 2, 3, 8, 9,10,12 ----------------------------------------------------------------------------------nonflammable a fluid or liquid a non-combustibleliquid that is not easily fluid ignited Patent `336 Claims 1,13 Patent `965 Claims 1, 4, 9 ----------------------------------------------------------------------------------
The parties dispute whether expanded foam is merely a mixture or must be "gasified" or "aerated." US Foam relies on the ordinary meaning of "expand" to argue that to expand foam is "to increase the volume of" foam. The chart above lists the disputed terms as the parties identified them. The Court distills the voluminous collection of disputed terms to the following list:
The parties dispute whether foam concentrate can be a substance (i.e., one type of material), or must be a solution (i.e., a mixture of two or more liquids). Nothing in the claims, specification, or prosecution history suggest that a foam concentrate is limited to a solution. Substance encompasses a solution as well as any other single-substance foam concentrate, such as a powder. The Court construes "foam concentrate" to mean "foamable substance."
The parties essentially agree to the definition of "foam concentrate/liquid mixture." The Court construes "foam concentrate/liquid mixture" to mean "foamable substance mixed with non-flammable liquid."
The parties dispute whether "Class A type foam concentrate" should be defined by what it is or what it does. US Foam argues that Class A fires are those involving "ordinary combustible materials," and a Class A foam concentrate is one that is suitable for extinguishing those types of fires. Defendants argue that the construction should specify the types of agents that extinguish Class A fires. If the patentee wanted to identify specific agents, he was free to draft the claims in such a manner. Rather, the patentee drafted the claim to identify foam by the fire class for which it is intended. The patentee is entitled to broadly claim his invention so that he captures all manner of agents without having to identify each individually.
US Foam uses a flawed approach toward reading the dictionary definition. US Foam takes the meaning of Class A and tries to add additional materials that were not included in the original definition: "rubber, as well as many plastic[s]." The complete sentence in the definition reads, "Class A includes fires in combustible materials, such as wood, paper, and cloth where the quenching and cooling effect of quantities of water or of solutions containing a high percentage of water is of first importance." The Court will use the complete definition and construe "class A type foam concentrate" to mean "a foam concentrate that is suitable for extinguishing Class A fires, which include fires in combustible materials, such as wood, paper, and cloth where the quenching and cooling effect of quantities of water or of solutions containing a high percentage of water is of first importance."
The parties have not briefed "nonflammable liquid." The definition for "nonflammable" is "incapable of being easily ignited and of burning with extreme rapidity." WEBSTER'S THIRD NEW INTERNATIONAL DICTIONARY OF THE ENGLISH LANGUAGE UNABRIDGED 1537 (1993). The Court construes "non-flammable liquid" to mean "a liquid that is incapable of being easily ignited and of burning with extreme rapidity."
-------------------------------------------------------------------------------Disputed term US Foam Defendants -------------------------------------------------------------------------------Introduce said allowing to be inject or placechilled nitrogen added said chilled foam on a fire
expanded nitrogen expandedfoam foam Patent `336 Claim 1 -------------------------------------------------------------------------------introduce allow to be added inject or place foam on a fire Patent `336 Claim 1 -------------------------------------------------------------------------------introducing a allowing to be adding compressedgas comprising added to said nitrogennitrogen stream a gas, other to the liquidunder pressure than air, that streamto said includes nitrogenstream and may include additional gases Patent `965 under pressure Claims 1, 9 -------------------------------------------------------------------------------introducing a allowing to be adding compressedgas consisting added a gas consisting nitrogenessentially of essentially to a liquid streamnitrogen under of nitrogen underpressure pressure Patent `965 Claim 4 -------------------------------------------------------------------------------introducing allowing to be mixing as described added in the `443 Patent `965 Patent, Column 2, Claims 1, 4, 9 Lines 67-68 and Column 3, Lines 1-3, 30-46 and 60-68 and in the `375 Patent, Column 3, Lines 33-42 -------------------------------------------------------------------------------mixing said combining nitrogen combining nitrogennitrogen with another substance Patent `336 Claim 1 -------------------------------------------------------------------------------mixing allowing the bringing introducing a gaseous together of aeration Patent `336 agent into a liquid Claim 1 foam generating solution as described in the `443 Patent, Column 3, Lines 60-68, Column 5, Lines 25-29 and in the `375 Patent, Column 3, Lines 33-42 -------------------------------------------------------------------------------
For the identified "mixing" and "introducing" terms, the Court need only construe "mixing" and "introducing." The remainder of the identified phrases does not require construction because the Court is construing the constituent terms.
The parties propose wildly different constructions for "mixing," neither of which can be correct. US Foam proposes a definition that allows mixing to take place but does not require the step. Defendants argue that U.S. Foam's use of "allowing" writes the step out of the claim. Defendants offer proposals, on the other hand, with an eye toward their invalidity case as their definitions incorporate pinpoint cites to unrelated prior art patents. The Court cannot adopt a construction that lacks intrinsic support and also invalidates the claims. See Phillips v. AWH Corp., 415 F.3d 1303, 1327 (Fed.Cir.2005) (en banc) ("[W]e have limited the maxim [of construing a claim to preserve its validity] to cases in which `the court concludes, after applying all the available tools of claim construction, that the claim is still ambiguous.'" (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 911 (Fed.Cir.2004))).
The Court sees from comparing the proposals that the parties agree that "mixing said nitrogen" means, at least in part, "combining nitrogen." As terms should be given the same meaning across different claims in a patent, see Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1087 (Fed.Cir.2009) (quoting PODS, Inc. v. Porta Stor, Inc., 484 F.3d 1359, 1366 (Fed.Cir.2007)). The Court construes "mixing" to mean "combining." Likewise, the parties agree, at least in part, that "introducing" means "adding." The Court construes "introducing" to mean "adding" and "introduce" means "add."
------------------------------------------------------------------------------------Disputed term US Foam Defendants ------------------------------------------------------------------------------------creating a allowing a fluid or pressurizing aflowing liquid that is moving foamable solutionstream to be brought to cause it to flow into existence and as described in the Patent `965 causing said fluid `443 Patent, Column Claim 4 or liquid to flow 3, Lines 46-68 and in the `375
Patent, Column 3, Lines 28-42 ------------------------------------------------------------------------------------ into a stream into a fluid or liquid the addition of a that is moving foamable agent Patent `965 into pressurized Claim 1 water as described in the `443 Patent, Column 2, Lines 49-53 and in the `375 Patent, Column 3, Lines 1-13said stream said fluid of liquid the addition of a that is moving foamable agent Patent `965 into pressurized Claim water as described in the `443 Patent, Column 2, Lines 49-53 and in the `375 Patent, Column 3, Lines 1-13 ------------------------------------------------------------------------------------stream of a mixture of foam the addition of afoam concentrate/liquid concentrate/liquid foamable agent mixture that is into pressurizedmixture moving water and pressurizing the foamable Patent `965 solution to Claim 9 cause it to flow ------------------------------------------------------------------------------------stream of mixture of nitrogen a moving flow offoam fire and foam gasified fire fightingsuppressant concentrate/liquid foam mixture that is Patent `965 moving Claims 1, 9 ------------------------------------------------------------------------------------
The parties agree that "stream" means "a fluid or liquid that is moving." Defendants argue that the movement must come from pressurization and not gravity. The claims already recite pressure limitations. For example, the `965 patent, Claim 1 recites that "nitrogen under pressure" is added to the foam concentrate mixture to create the fire suppressant foam. See also `965 patent, claim 4 ("said flowing stream being maintained at a pressure of at least 90 psi, introducing a gas consisting essentially of nitrogen under pressure of at least 100 psi. . . ."); `965 patent, claim 9 ("introducing a gas comprising nitrogen under pressure"). Defendants' proposal adds an unnecessary limitation.
The Court adopts the following constructions:
creating a flowing stream making a flowing stream -------------------------------------------------------------------------------------into a stream into a stream -------------------------------------------------------------------------------------said stream said stream -------------------------------------------------------------------------------------stream of foam stream of foamconcentrate/liquid concentrate/liquidmixture mixture -------------------------------------------------------------------------------------stream of foam fire moving flow of expandedsuppressant foam fire suppressant
-------------------------------------------------------------------------------------Disputed term US Foam Defendants -------------------------------------------------------------------------------------chilled prior chilled prior to the to cool or haveto admixture act of mixing cooled to a cold temperature or Patent `336 liquid phase before Claim 3 the foam concentrate is being mixed with nitrogen -------------------------------------------------------------------------------------chilling lowering the to cool or havenitrogen gas temperature of cooled to a cold nitrogen gas temperature or Patent `336 liquid phase Claim 1 -------------------------------------------------------------------------------------
The parties agree that "chilling" means "lowering the temperature" and that "chilled" means "lowered in temperature." The Court incorporates the parties' agreement and adopts the following constructions:
-------------------------------------------------------------------------------------chilled prior to admixture lowered in temperature prior to the act of mixing -------------------------------------------------------------------------------------chilling nitrogen gas lowering the temperature of nitrogen gas -------------------------------------------------------------------------------------
-------------------------------------------------------------------------------------Disputed term US Foam Defendant -----------------------------------------------------------------------------------proportioned adjusted in relation mixed in a measured to the amount ured amount Patent `965 of other substance Claims 3,12 in the mixture -------------------------------------------------------------------------------------proportioning allowing the mixing the foamablea foam concentrate amount of a foam solution with ainto a concentrate to be noncombustiblestream of adjusted in relation fluid in a measurednonflammable to the amount ured amountliquid of nonflammable liquid in a stream Patent `965 Claims 1, 9 -------------------------------------------------------------------------------------Proportioning allowing the mixing together amount of a substance in a measured Patent `336 included amount Claim 1 within a mixture Patent `965 to be adjusted in
Claims 1, 4, 9 relation to the amount of other substances in the mixture ------------------------------------------------------------------------------------- proportions Allows the amount [See Proportioned of a substance included and Proportioning] Patent `965 within a Claim 11 mixture to be adjusted in relation to the amount of other substances in the mixture ------------------------------------------------------------------------------------- proportioning allowing the mixing together
The parties primarily dispute whether proportioning is permissible, rather than mandatory. They also dispute whether proportioning is "mixing in a measured amount" or "adjusting in relation to other [substances]." As previously explained, "allows" or "allowing" are not correct. What largely remains for the Court to decide is whether proportioning is adjusting or mixing.
The specification explains that proportioning foam concentrate and water can be accomplished by adjusting water pressure relative to foam concentrate. `336 patent, 7::59-65. It also explains that the foam concentrate and water can be pre-mixed in a container for small fires. `336 patent, 7:53-57. Claim 3 of the `965 patent recites specific pressures. The specification also explains that the foam concentrate are combined as ratios: "The foam concentrate. . . is normally proportioned with water in percentages ranging from about 0.1% by volume foam concentrate to about 1% by volume foam concentrate." `336 patent, 7:44-51. See also `965 patent, 4:28-31 ("The foam concentrate is proportioned with water in percentages ranging from about 0.1% by volume to about 1% by volume depending on the hardness of the water."). Claim 6 of the `965 patent also recites specific percentages.
Looking to the claim language, the relevant limitations use "proportioning . . . into" to produce a mixture. For example, Claims 1 and 9 of the `965 patent recite, "proportioning a foam concentrate into a stream of non-flammable liquid to form a stream of foam concentrate/liquid mixture." Defendants' verb of choice, "mixing," seems redundant considering the ultimate product is a "mixture." US Foam's verb choice of "adjusting" is inappropriate for the pre-mixed embodiment. The verb "measuring," however, is instructive and more accurately describes how the foam concentrate/liquid mixture is created for each of the embodiments. The embodiments described include "premix[ing] the foam concentrate and water in a suitable container," Venturi "line proportioning devices" that measure the flow rate of the foam and water, and "`around the pump' proportioners." `336 patent, 7:51-8:15. The word "measuring" reflects premixing, adjusting the flow rate, and manipulating the concentrations, as recited in Claims 3 or 6.
The Court construes "proportioning" to mean "measuring," "proportioned" to mean "measured," and "proportions" to mean "measures."
-------------------------------------------------------------------------------------------Disputed term US Foam Defendants ------------------------------------------------------------------------------------------- one ingress an entrance to an borehole to the point to said an area of a mine area of the coal area of said shaft that is on mine on fire mine shaft involved fire in fire Patent `965 Claims 1, 9 -------------------------------------------------------------------------------------------one ingress one entrance borehole or otherpoint place where nitrogen expanded Patent `965 foam is injected or Claims 1, 9, 13 placed on a fire -------------------------------------------------------------------------------------------through said through at least the boreholeat least one one entrance where the expandedingress point foam is placed on a fire Patent `965 Claims 1, 9 -------------------------------------------------------------------------------------------seal includes closure includes at an air tight firesaidat least least one entrance proof barrier toone foam ingress for the introduction confine an area ofpoint of foam the coal mine on fire, except for the
Patent `965 ingress point identified Claim 14 in this claim -------------------------------------------------------------------------------------------
The parties have agreed that "ingress point," as recited in claim 1 of the `965 patent, means "an entrance." The parties appear to dispute these terms, but provide no argument for the Court to consider. Incorporating the parties' agreement regarding "ingress point" and its constructions for other constituent terms, the Court adopts the following constructions:
-------------------------------------------------------------------------------------------one ingress point one entrance -------------------------------------------------------------------------------------------through said at least one through at least oneingress point entrance -------------------------------------------------------------------------------------------seal includes said at least closure includes at least oneone foam ingress point entrance for the introduction of foam -------------------------------------------------------------------------------------------
-------------------------------------------------------------------------------------------Disputed term US Foam Defendants -------------------------------------------------------------------------------------------flooding said allowing an area of to fully cover thearea of said the mine shaft coal mine fire withmine shaft that is on fire to water prior to injectinginvolved in the be covered with or placingfire with water the foam mixtureWater on the combustible material Patent `965 Claim 2 -------------------------------------------------------------------------------------------forming allowing to be producing a foamable made solution as in Patent `336 the `375 Patent, Claims 1, 9 Column 3, Lines 4-10 and Lines 21-23 and the `443 Patent, Column 3, Lines 60-68 -------------------------------------------------------------------------------------------providing allowing to be constructing at supplied least one entry Patent `965 point to the area Claims 1, 9 of the mine involved in the fire -------------------------------------------------------------------------------------------drawing out to remove at a removing air fromat least a portion minimum a part of the confined areaof the the ambient atmosphere involved with theambient atmosphere from an mine firefrom area that is on firesaid area involved after it has beenin fire allowed to beafter it has made firmly closedbeen sealed or secured Patent `965 Claim 10 -------------------------------------------------------------------------------------------reduction of lowering of the in a coal mine fire,the surface surface temperature reducing the boreholetemperature of material temperaturesof combustible capable of burning to 90° F or lessmaterial in in the sealed portionsaid sealed to approximatelyportion to 90° Fabout 90° F Patent `336 Claim 8 -------------------------------------------------------------------------------------------thereby to to reduce the to reduce the boreholelower the temperature at temperaturetemperature the surface of the readings forat the surface combustible material the combustibleof combustible at the area material in thematerial at mine said area Patent `336 Claim 1 -------------------------------------------------------------------------------------------substantially close off contact or a layer of expandedclose off contact almost close off foam betweenbetween contact to material combustible materialcombustible capable of burning and the ambientmaterial involved bient atmospherein fire and ambient atmosphere Patent `965 Claim 4 -------------------------------------------------------------------------------------------substantially close off contact or to seal a confinedclose off contant almost close off area of a coal minebetween contact between involved with acombustible the ambient atmosphere firematerial involved and thein fire material capableand ambient of burning that isatmosphere on fire Patent `965 Claim 4 -------------------------------------------------------------------------------------------
For seven disputed terms and phrases, the parties failed to help the Court understand their positions with the benefit of briefing or oral argument. Even though the parties have not identified the substance of their positions or the real dispute, the Court must nonetheless fulfill its duty to determine the proper scope of the claims. See 02 Micro Intern. Ltd. v. Beyond Innovation Technology Co., Ltd., 521 F.3d 1351, 1360-61 (Fed.Cir.2008) (requiring the Court to resolve all real disputes because "claim construction requires the court to determine what claim scope is appropriate in the context of the patents-in-suit").
Defendants' proposal for the "flooding" term incorporates the remainder of the claim limitation into the disputed phrase. Claim 2 of the `965 patent reads, "The method of claim 1 further including the step of flooding said are of said mine shaft involved in the fire with water prior to directing said stream containing said expanded foam fire suppressant." `965 Patent, claim 2. The additional phrase, "prior to injecting or placing the foam mixture on the combustible material" in Defendants' proposal merely restates the remainder of the claim. The parties also appear to dispute whether flooding requires that the mine shaft be "fully" covered. US Foam relies on a dictionary definition, but chooses the one definition that requires the least amount of water. For example, other definitions recite "to become filled to excess with some fluid", "to cover or overwhelm", or "to fill more or less completely with water or other fluid." Based on both parties proposed terms, however, the parties apparently agree that the mine shaft must be covered with water and need not be filled with water. The Court construes "flooding said area of said mine shaft involved in the fire with water" to mean "covering the surfaces of the mine shaft that are on fire with water."
Defendants' proposal for "forming" impermissibly relies upon other, unrelated patents. The definition of "form" is "to give form or shape to: FRAME, CONSTRUCT, MAKE, FASHION." WEBSTER'S THIRD NEW INTERNATIONAL DICTIONARY OF THE ENGLISH LANGUAGE UNABRIDGED 893 (1993). The Court construes "forming" to mean "making or constructing."
Defendants' proposal for "providing" incorporates the remainder of the claim limitation into the definition of providing. Claim 1 of the `965 patent recites "providing at least one ingress point to said an area of said mine shaft involved in fire." Defendants' proposal would make the trailing language superfluous. US Foam's use of "allowing" is equally impermissible. The parties also dispute whether an ingress point is "constructed" or "supplied." They offer little assistance to the Court on this point. The specification uses the word "constructing" with respect to the seals, which is where the ingress point is located in at least one embodiment. `336 patent, 4:46-47. In the first example, the specification explains that water pipes served as the ingress point and were "installed." `336 patent, 8:34-51. The definition of "provide" is "to supply for use." WEBSTER'S THIRD NEW INTERNATIONAL DICTIONARY OF THE ENGLISH LANGUAGE UNABRIDGED 1827 (1993). While constructing may be appropriate in some scenarios, constructing is narrower than supplying as it implies more planning and labor than supplying. The Court can envision supplying a hole in a mine without constructing it. The Court construes "providing" to mean "supplying."
With respect to the "drawing out" phrase, the Court has construed all of the constituent terms except the phrase "drawing out at least a portion of the ambient atmosphere." The parties agree that "to draw out" means "to remove." The parties appear to dispute whether "ambient atmosphere" means "air." US Foam did not offer a definition for "ambient atmosphere" while Defendants propose "air." The specification explains that
The parties appear to dispute, for the two "surface temperature" claim limitations whether the temperature must be measured using a borehole reading. Defendants offer extrinsic evidence to support their proposal that the temperature readings can be made only at a borehole. Nowhere in the claims or specification, or as far as the Court can determine, in the prosecution history does the patentee use the word "borehole." Necessary to the invention is the reduction in temperature of the surface of the coal mine, not the borehole. The Court construes "reduction of the surface temperature of combustible material in said sealed portion to about 90° F" to mean "lowering of the surface temperature of material capable of burning in the sealed portion to approximately 90° F." The Court construes "thereby to lower the temperature at the surface of combustible material at said area" to mean "in order to lower the temperature at the surface of the combustible material at said area."
The parties dispute the meaning of the phrase "substantially close off contact between combustible material involved in fire and ambient atmosphere," each party offering two different constructions for this term. Defendants argue that "substantially close off contact" means the same thing as seal. Claim 4 of the `965 patent teaches that the expanded foam fire suppressant is what "substantially closes off contact" between the atmosphere and the burning material. `965 patent, claim 4. There is no support for Defendants' proposal that the foam creates a seal. The foam creates a barrier to prevent air, or other gaseous fuel, from feeding the fire. The Court construes "substantially close off contact between combustible material involved in fire and ambient atmosphere" to mean "create a barrier between combustible material involved in fire and ambient atmosphere."
------------------------------------------------------------------------------Disputed term On Site US Foam ------------------------------------------------------------------------------ a fire extin A gas that contains A fire extinguishing guishing chemical argon and nitrogen chemical of a of a gas optionally gas type that includes type that comprises with other nitrogen prises argon components and argon and and nitrogen may include additional gases, Claims 1, 6 however the source of the argon is a source other than the argon that is isolated from air during generation of the nitrogen. ------------------------------------------------------------------------------
The parties dispute whether the gas must include nitrogen and argon, and whether the argon gas, if included, must have an independent source. On Site relies on the specification to argue that the
US Foam argues that the patentee disavowed the scope of a nitrogen-air mixture when it amended the claims to overcome prior art. As originally drafted, the claim recited "a fire extinguishing chemical of a gas type comprising at least one member selected from a group consisting of argon, nitrogen, and carbon dioxide." Amendment, February 25, 2005, at p. 2. The patentee amended the claim to overcome the examiner's rejection because "[the prior art reference] shows a device and teaches [a] method of extinguishing a fire using a gas type chemical, nitrogen using a foam formed by water containing a synthetic surface-active agent." Office Action, Nov. 29, 2004, at 4. Amending the claim, the patentee distinguished over the prior art reference, explaining that it "fails to disclose the use of a fire extinguishing chemical that comprises argon and nitrogen." Amendment, Feb. 25, 2005, at 9-10. US Foam argues that On Site's proposal would permit air, which would recapture the prior art that included a nitrogen-air mixture.
"Just as prosecution history estoppel may act to estop an equivalence argument under the doctrine of equivalents, positions taken before the PTO may bar an inconsistent position on claim construction under § 112, ¶ 6." Ballard Medical Products v. Allegiance Healthcare Corp., 268 F.3d 1352, 1359 (Fed.Cir.2001) (quoting Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1457 (Fed.Cir.1998)). According to the examiner, the prior art taught mixing nitrogen with the air, such that "the addition of the nitrogen into the system would inherently reduce the oxygen concentration below 21% and would normally reduce the[] oxygen concentration to ranges claimed." Office Action, Dec. 1, 2004, at 4. [Dkt. 76-7] The patentee amended the claims to require nitrogen and argon and explained that the prior art did not disclose using both nitrogen and argon to reduce the concentration of oxygen. If the argon in this limitation was the argon in air, then the argon would serve no purpose to reduce the concentration of oxygen as it would necessarily be accompanied by the oxygen in gas. The Court agrees that the gas cannot be air. The Court finds no support for U.S. Foam's proposal, however, that further limits the source of the argon such that it cannot be created or generated from the air. The Court construes the phrase to mean, "a gas other than air that contains argon and nitrogen, optionally with other components."
----------------------------------------------------------------------------------------Disputed term On Site US Foam ---------------------------------------------------------------------------------------- foams have the The cells of the The foams have strength in expanded foam sufficient structural such an extent survive being integrity to that, after they discharged, but resist breaking have discharged, break up upon apart after being they making contact discharged and are not broken with fire. before reaching until reaching a the fire thus allowing fire and, upon the foams to contact to the carry the gas to fire, they are the fire, but lack broken Claim 2 the structural integrity to resist breaking apart upon contact with the fire and break apart upon contact with the fire thus releasing the gas contained in the foam, which then extinguishes the fire ----------------------------------------------------------------------------------------
The parties dispute the purpose of the cells. US Foam argues that the foam is created, "thus releasing the gas contained in the foam, which then extinguishes
The court adopts the constructions set forth in this opinion for the disputed terms of the `965, `336, and `558 patents. The parties are ordered that they may not refer, directly or indirectly, to each other's claim construction positions in the presence of the jury. Likewise, the parties are ordered to refrain from mentioning any portion of this opinion, other than the actual definitions adopted by the court, in the presence of the jury. Any reference to claim construction proceedings is limited to informing the jury of the definitions adopted by the court.
It is SO ORDERED.
