Judges: Susan G. Braden
Filed: Sep. 06, 2017
Latest Update: Mar. 03, 2020
Summary: In the United States Court of Federal Claims No. 16-909 Filed: September 6, 2017 **************************************** * BEACON ADHESIVES, INC., * 28 U.S.C. § 1498(a); * 35 U.S.C. § 112; Plaintiff, * Claim Construction; * Extrinsic Evidence; v. * Intrinsic Evidence; * Manual Of Patent Examining THE UNITED STATES, * Procedure (“MPEP’) § 2112.02 * Process Claims; Defendant. * Rule of the United States Court of * Federal Claims (“RCFC”) 40.1. * **************************************** Joseph J.
Summary: In the United States Court of Federal Claims No. 16-909 Filed: September 6, 2017 **************************************** * BEACON ADHESIVES, INC., * 28 U.S.C. § 1498(a); * 35 U.S.C. § 112; Plaintiff, * Claim Construction; * Extrinsic Evidence; v. * Intrinsic Evidence; * Manual Of Patent Examining THE UNITED STATES, * Procedure (“MPEP’) § 2112.02 * Process Claims; Defendant. * Rule of the United States Court of * Federal Claims (“RCFC”) 40.1. * **************************************** Joseph J. Z..
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In the United States Court of Federal Claims
No. 16-909
Filed: September 6, 2017
****************************************
*
BEACON ADHESIVES, INC., * 28 U.S.C. § 1498(a);
* 35 U.S.C. § 112;
Plaintiff, * Claim Construction;
* Extrinsic Evidence;
v. * Intrinsic Evidence;
* Manual Of Patent Examining
THE UNITED STATES, * Procedure (“MPEP’) § 2112.02
* Process Claims;
Defendant. * Rule of the United States Court of
* Federal Claims (“RCFC”) 40.1.
*
****************************************
Joseph J. Zito, DNL Zito, Washington, D.C., Counsel for Plaintiff.
Walter W. Brown, United States Department of Justice, Civil Division, Washington,
D.C., Counsel for the Government.
MEMORANDUM OPINION AND ORDER CONSTRUING CERTAIN
CLAIMS OF UNITED STATES PATENT NO. 7,032,492
BRADEN, Chief Judge.
To facilitate review of this Memorandum Opinion and Order construing certain
claims of United States Patent No. 7,032,492, the court has provided the following outline:
I. THE PATENT AT ISSUE.
II. PROCEDURAL HISTORY.
III. DISCUSSION.
A. Jurisdiction.
B. Standing.
C. Controlling Precedent Concerning Construction Of Patent Claims.
1. The Person Of Ordinary Skill In The Art.
2. A Federal Trial Judge Should First Examine Intrinsic
Evidence.
a. The Claims.
b. The Specification.
c. The Prosecution History.
3. A Federal Trial Judge May Examine Extrinsic Evidence, But
Only In Limited Circumstances.
IV. THE COURT’S CONSTRUCTION OF CERTAIN PATENT CLAIMS
TERMS REQUESTED BY THE PARTIES.
A. United States Patent No. 7,032,492.
1. Claim 1.
B. Construction Of The Disputed Terms.
1. “A Joint Between The Projectile And The Casing.”
a. Plaintiff’s Proposed Construction.
b. The Government’s Proposed Construction.
c. The Court’s Resolution.
2. “Not Capillarily Active At The Joint.”
a. Plaintiff’s Proposed Construction.
b. The Government’s Proposed Construction.
c. The Court’s Resolution.
3. “Not Anaerobically Curing.”
a. Plaintiff’s Proposed Construction.
b. The Government’s Proposed Construction.
c. The Court’s Resolution.
V. CONCLUSION.
2
I. THE PATENT AT ISSUE.1
On April 25, 2006, the United States Patent and Trademark Office (“USPTO”)
issued U.S. Patent No. 7,032,492 (the “’492 patent”), a patent on “Ammunition Articles
Comprising Light-Curable Moisture-Preventative Sealant And Method Of Manufacturing
Same.” Compl. ¶ 13. Mr. Milton Meshirer, the inventor of the ’492 patent, assigned the
’492 patent to Beacon Adhesives, Inc. (“Beacon Adhesives”). Compl. ¶ 3.
Pl. Br. at 7 (depicting cut-away from assembled munition).
II. PROCEDURAL HISTORY.
On August 1, 2016, Beacon Adhesives (“Plaintiff”) filed a Complaint in the United
States Court of Federal Claims alleging that the Department of Defense infringed the ’492
patent. ECF No. 1. On that same day, the case was assigned to the Honorable Judge
Marion Blank Horn. ECF No. 2.
1
The facts cited and discussed herein were derived from: Plaintiff’s August 1, 2016
Complaint (“Compl.”) and attached Exhibit (“Compl. Ex. 1”); Plaintiff’s June 26, 2017
Opening Claim Construction Brief Exhibits (“Pl. Br. Ex. 1–2”); the Government’s June 26,
2017 Claim Construction Brief Exhibit (“Gov’t Br. Ex. 1”); and Transcripts of the Claim
Construction Hearing held on March 17, 2017, in Washington, D.C. (“3/17/17 Tr. 1–96”).
3
On August 23, 2016, the case was reassigned to the undersigned judge, pursuant to
Rule 40.1 of the Rules of the United States Court of Federal Claims (“RCFC”).2 ECF No.
5. On November 29, 2016, the Government filed an Answer. ECF No. 8. On January 23,
2017, the parties filed a Joint Preliminary Status Report. ECF No. 10. On January 27,
2017, the court held a telephonic status conference. On February 13, 2017, the court
granted a Protective Order to safeguard the confidentiality of “competition sensitive or
otherwise protectable” information. ECF No. 14.
On March 14, 2017, the Government filed a Claim Construction Chart And
Appendix that included, the Government’s proposed constructions and supporting
attachments. ECF No. 16.
On March 17, 2017, the court held a Claim Construction Hearing at the Howard T.
Markey National Courts Building, 717 Madison Place, Northwest, Washington, D.C.,
20439.
On April 17, 2017, the Government filed a Preliminary Proposed Claims Chart And
Briefing Schedule, pursuant to the March 17, 2017 Claim Construction Hearing. ECF No.
20. On that same day, Plaintiff filed a Notice Of Clarification Regarding [] Claim Chart,
disagreeing with the Government’s April 17, 2017 Preliminary Claims Chart on the
construction of claim 7, and proposed briefing schedule. ECF No. 21.
On April 19, 2017, the court entered a Scheduling Order for claim construction and
response briefing. ECF No. 22.
On June 26, 2017, Plaintiff filed an Opening Claim Construction Brief (“Pl. Br.”).
ECF No. 25. On that same day, the Government filed a Brief On Claim Construction
(“Gov’t Br.”). ECF No. 24. On July 10, 2017, Plaintiff filed a Responsive Claim
Construction Brief (“Pl. Resp. Br.”). ECF No. 27. On that same day, the Government filed
a Response Brief (“Gov’t Reply Br.”). ECF No. 26.
III. DISCUSSION.
A. Jurisdiction.
The United States Court of Federal Claims has jurisdiction to adjudicate claims
alleging that “an invention described in and covered by a patent of the United States is used
2
RCFC 40.1, in relevant part, provides:
Transfer. To promote docket efficiency, to conform to the requirements
of any case management plan, or for the efficient administration of justice,
the assigned judge either on the party’s motion or on the court’s own
initiative, may order the transfer of a case to another judge upon the
agreement of both judges.
RCFC 40.1(b).
4
or manufactured by or for the United States without license of the owner thereof or lawful
right to use or manufacture the same . . . [seeking] recovery of . . . reasonable and entire
compensation for such use and manufacture.” 28 U.S.C. § 1498(a).
The August 1, 2016 Complaint alleges that the Department of Defense and other
agencies, without license or lawful right to use or manufacture the same, infringed the
patented process covered by the ’492 patent. Compl. at ¶ 4. Therefore, the court has
determined that the August 1, 2016 Complaint properly invokes the court’s jurisdiction,
pursuant to 28 U.S.C. § 1498(a), authorizing the United States Court of Federal Claims to
adjudicate claims of patent infringement against the federal government.
B. Standing.
“Standing is a threshold jurisdictional issue.” Myers Investigative & Sec. Servs. v.
United States, 275 F.3d 1366, 1369–70 (Fed. Cir. 2002). “The party invoking federal
jurisdiction bears the burden of establishing the[ ] elements [of standing].” Lujan v. Defs.
of Wildlife,
504 U.S. 555, 561 (1992).
“A patentee shall have remedy by civil action for infringement of his patent.” 35
U.S.C. § 281; see also 35 U.S.C. § 100(d) (“The word ‘patentee’ includes not only the
patentee to whom the patent was issued but also the successors in title to the patentee.”);
see Tyco Healthcare Grp. LP v. Ethicon Endo-Surgery, Inc., 587 F.3d 1375, 1378 (Fed.
Cir. 2009) (the United States Court of Appeals for the Federal Circuit has determined that
in order “[t]o assert standing for patent infringement, the plaintiff must demonstrate that it
held enforceable title to the patent at the inception of the lawsuit.”).
The standard set forth by the United States Supreme Court over a century ago in
Waterman v. Mackenzie, 138 U.S. 252 (1891) still governs:
There can be no doubt that he is “the party interested, either as patentee,
assignee, or grantee,” and as such entitled to maintain an action at law to
recover damages for an infringement; and it cannot have been the intention
of [C]ongress that a suit in equity against an infringer to obtain an injunction
and an account of profits, in which the court is authorized to award damages,
when necessary to fully compensate the plaintiff, and has the same power
to treble the damages as in an action at law, should not be brought by the
same person.
Id. at 260–61 (internal citations omitted).
The August 1, 2016 Complaint alleges, inter alia, that: 1) the USPTO issued the
’492 patent to Milton Meshirer, and he assigned it to Beacon Adhesives; 2) the United
States manufactured bullets and munitions using the process in the ’492 patent; 3) the
United States directly or through its contractors, including Alliant Technology Systems
and Hernon Manufacturing, Inc., manufactures bullets and other munition using a process
that infringes the ’492 patent; 4) the United States has procured, or procures, from others,
infringing bullets, munitions, and munition sealants manufactured according to the process
protected by the ’492 patent; and 5) the United States is without license of the owner thereof
5
or lawful right to use or manufacture the invention covered by the ’492 patent. Compl. at
¶¶ 1–34.
The facts alleged in the August 1, 2016 Complaint state a patent infringement claim
that is plausible on its face and alleges more than the mere possibility of potential liability.
See Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (“[A] complaint must contain sufficient
factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’”).
For these reasons, the court has determined that Plaintiff has standing to seek an
adjudication of the claims alleged in the August 1, 2016 Complaint.
C. Controlling Precedent Concerning Construction Of Patent Claims.
In Markman v. Westview Instruments, Inc. (“Markman III”), 517 U.S. 370 (1996),
the United States Supreme Court unanimously affirmed the en banc decision of the United
States Court of Appeals for the Federal Circuit in Markman v. Westview Instruments, Inc.
(“Markman II”),
52 F.3d 967 (Fed. Cir. 1995) (en banc), holding that the meaning and
scope of a patent’s claims are issues of law to be determined by a federal trial judge. See
Markman
III, 517 U.S. at 372. When conducting patent claim construction, federal trial
judges should seek to give any disputed claim term its “ordinary and customary meaning,”
that 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.” Phillips v. AWH Corp.,
415 F.3d 1303, 1313 (Fed. Cir. 2005).
The significance of Markman III is that the United States Supreme Court afforded
considerable deference to the appellate court’s analysis in conducting claim construction.
See Markman III, 517 U.S. at 390 (“It was just for the sake of such desirable uniformity
that Congress created the [United States] Court of Appeals for the Federal Circuit as an
exclusive appellate court for patent cases, H.R. Rep. No. 97–312, at 20–23 (1981),
observing that increased uniformity would ‘strengthen the United States patent system in
such a way as to foster technological growth and industrial innovation.’”).
The court now turns to that analysis.
1. The Person Of Ordinary Skill In The Art.
As a threshold matter, a federal trial judge is required to examine patent claim terms
and phrases from the perspective of a person of ordinary skill in the art (“POSITA”). See
Markman II, 52 F.3d at 986 (“[T]he focus in construing disputed terms in claim language
. . . is on the objective test of what one of ordinary skill in the art at the time of the invention
would have understood the term to mean.”); see also Shire Dev., LLC v. Watson Pharm.,
Inc.,
787 F.3d 1359, 1364 (Fed. Cir. 2015) (holding that a federal trial judge is required to
afford claim terms “their ordinary and accustomed meaning as understood by one of
ordinary skill in the art.”);
Phillips, 415 F.3d at 1313 (“The inquiry into how a person of
ordinary skill in the art understands a claim term provides an objective baseline from which
to begin claim interpretation.”). This requirement is “based on the well-settled
understanding that inventors are typically persons skilled in the field of the invention and
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that patents are addressed to and intended to be read by others of skill in the pertinent art.”
Phillips, 415 F.3d at 1313.
A determination of the POSITA is a “basic factual inquir[y],” Graham v. John
Deere Co., 383 U.S. 1, 17 (1966), and,
[f]actors that may be considered in determining the ordinary level of skill
in the art include: 1) the types of problems encountered in the art; 2) the
prior art solutions to those problems; 3) the rapidity with which innovations
are made; 4) the sophistication of the technology; and 5) the educational
level of active workers in the field.
Ruiz v. A.B. Chance Co., 234 F.3d 654, 666–67 (Fed. Cir. 2000).
After ascertaining the POSITA, federal trial judges next determine the “ordinary
and customary meaning” of the disputed claim terms. In doing so, a distinction must be
drawn between intrinsic and extrinsic evidence.
2. A Federal Trial Judge Should First Examine Intrinsic Evidence.
“In some cases, the ordinary meaning of claim language as understood by a person
of skill in the art may be readily apparent even to lay judges, and claim construction in such
cases involves little more than the application of the widely accepted meaning of
commonly understood words.” Phillips, 415 F.3d at 1314. In many cases, however, “the
meaning of a claim term as understood by persons of skill in the art is often not immediately
apparent” and federal trial judges should “look[] to ‘those sources available to the public
that show what a person of skill in the art would have understood disputed claim language
to mean.’”
Id. (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc.,
381
F.3d 1111, 1116 (Fed. Cir. 2004)). “Those sources include ‘the words of the claims
themselves, the remainder of the specification, the prosecution history, and extrinsic
evidence concerning relevant scientific principles, the meaning of technical terms, and the
state of the art.’”
Phillips, 415 F.3d at 1314 (quoting Innova/Pure Water,
Inc., 381 F.3d at
1116). Although federal trial judges may rely on each of these sources of evidence, the
United States Court of Appeals for the Federal Circuit has outlined an analytical framework
prioritizing some sources over others. C.R. Bard, Inc. v. U.S. Surgical Corp.,
388 F.3d
858, 862 (Fed. Cir. 2004) (“Under this approach to claim construction, evidence extrinsic
to the patent document ‘can shed useful light on the relevant art,’ but is less significant than
the intrinsic record in determining the ‘legally operative meaning of disputed claim
language.’” (quoting Vanderlande Indus. Nederland BV v. Int'l Trade Comm'n,
366 F.3d
1311, 1318 (Fed. Cir. 2004))); see also Vitronics Corp. v. Conceptronic, Inc.,
90 F.3d 1576,
1582 (Fed. Cir. 1996) (“Such intrinsic evidence is the most significant source of the legally
operative meaning of disputed claim language.”).
In particular, the United States Court of Appeals for the Federal Circuit has
instructed federal trial judges to begin by examining “intrinsic evidence,” because it is the
“most significant source of the legally operative meaning of disputed claim language.”
Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1370 (Fed. Cir. 2005). The forms
7
of intrinsic evidence include the “claims, the specification and, if in evidence, the
prosecution history.” Vitronics Corp., 90 F.3d at 1582 (citing Markman
II, 52 F.3d at 979).
Within the forms of intrinsic evidence, however, the United States Court of Appeals
for the Federal Circuit has established a hierarchy of consideration for the court to follow.
See Vitronics Corp., 90 F.3d at 1582–83 (“First, we look to the words of the claims
themselves . . . second, it is always necessary to review the specification . . . [and] [t]hird,
the court may also consider the prosecution history of the patent . . .”).
a. The Claims.
The claims themselves are the highest priority of intrinsic evidence, and federal
trial judges should first look “to the words of the claims themselves, both asserted and
nonasserted, to define the scope of the patented invention.” Vitronics Corp., 90 F.3d at
1582. This is because oftentimes “the claims themselves provide substantial guidance as
to the meaning of particular claim terms.”
Phillips, 415 F.3d at 1314. For example, “the
context in which a term is used in the asserted claim can be highly instructive.”
Id.
Furthermore, “[o]ther claims of the patent in question, both asserted and unasserted,
can also be valuable sources of enlightenment as to the meaning of a claim term.”
Id.
(citing Vitronics Corp., 90 F.3d at 1582). For instance, “[b]ecause claim terms are
normally used consistently throughout the patent, the usage of a term in one claim can often
illuminate the meaning of the same term in other claims.”
Phillips, 415 F.3d at 1314–15.
Conversely, “[d]ifferences among claims can also be a useful guide in understanding the
meaning of particular claim terms.”
Id. For example, “the presence of a dependent claim
that adds a particular limitation gives rise to a presumption that the limitation in question
is not present in the independent claim.”
Id. (citing Liebel-Flarsheim Co. v. Medrad, Inc.,
358 F.3d 898, 910 (Fed. Cir. 2004)).
b. The Specification.
Next, although federal trial judges must begin by reviewing the “claims
themselves,” the “[c]laims must always be read in the light of the specification.” See In re
Fout, 675 F.2d 297, 300 (C.C.P.A. 1982).
As a matter of law, the specification is the “written description of the invention.”
35 U.S.C. § 112(a). For this reason, “the specification is always highly relevant to the
claim construction analysis.” Vitronics Corp., 90 F.3d at 1582 (“Usually, [the
specification] is dispositive; it is the single best guide to the meaning of a disputed term.”).
Accordingly, the specification is accorded deference in claim construction, because it is
the patentee’s statement to the public describing the invention. See Honeywell Int’l, Inc.
v. ITT Indus., Inc.,
452 F.3d 1312, 1318 (Fed. Cir. 2006) (“[T]he public is entitled to take
the patentee at his word[.]”). In fact, where the claim language is ambiguous, the
“specification, including the inventors’ statutorily-required written description of the
invention[] is the primary source for determining claim meaning.” Becton, Dickinson &
Co. v. Tyco Healthcare Grp., LP,
616 F.3d 1249, 1255 (Fed. Cir. 2010); see also
Astrazeneca AB, Aktiebolaget Hassle, KBI-E, Inc. v. Mut. Pharm. Co.,
384 F.3d 1333, 1337
8
(Fed. Cir. 2004). Of course, the utility of the specification depends on whether the “written
description of the invention [is] . . . clear and complete enough to enable those of ordinary
skill in the art to make and use it.” Liquid Dynamics Corp. v. Vaughan Co., 355 F.3d 1361,
1367 (Fed. Cir. 2004).
The specification is particularly important in two circumstances. The first
circumstance is where the specification includes a “special definition given to a claim term
by the patentee that differs from the meaning it would otherwise possess.” Akamai Techs.,
Inc. v. Limelight Networks, Inc., 805 F.3d 1368, 1375 (Fed. Cir. 2015), cert. denied,
136
S. Ct. 1661 (2016) (quoting
Phillips, 415 F.3d at 1316); see also Edwards Lifesciences
LLC v. Cook, Inc.,
582 F.3d 1322, 1329 (Fed. Cir. 2009) (stating where two terms are used
interchangeably, it “is akin to a definition equating the two”). Therefore, “a patentee can
act as his own lexicographer to specifically define terms of a claim contrary to their
ordinary meaning.” Process Control Corp. v. Hydreclaim Corp.,
190 F.3d 1350, 1357
(Fed. Cir. 1999); see also Boss Control, Inc. v. Bombardier Inc.,
410 F.3d 1372, 1377 (Fed.
Cir. 2005) (holding that, in ascertaining the scope of the patent, deference should be
afforded claims as defined by their “customary meaning,” with the caveat that the law
affords patentees the right to serve as “lexicographers,” if a special or unique definition is
clearly stated in the specifications or prosecution history). In such a case, however, “the
written description . . . must clearly redefine a claim term ‘so as to put a reasonable
competitor or one reasonably skilled in the art on notice that the patentee intended to so
redefine that claim term.’” Elekta Instrument S.A. v. O.U.R. Scientific Int’l, Inc.,
214 F.3d
1302, 1307 (Fed. Cir. 2000) (quoting Process Control
Corp., 190 F.3d at 1357).
The second circumstance is where the specification “may reveal an intentional
disclaimer, or disavowal, of claim scope by the inventor.” Openwave Sys., Inc. v. Apple
Inc., 808 F.3d 509, 513 (Fed. Cir. 2015) (quoting
Phillips, 415 F.3d at 1316); see also CCS
Fitness, Inc. v. Brunswick Corp.,
288 F.3d 1359, 1366–67 (Fed. Cir. 2002) (holding that
“a claim term will not carry its ordinary meaning if the intrinsic evidence shows that the
patentee distinguished that term from prior art on the basis of a particular embodiment,
expressly disclaimed subject matter, or described a particular embodiment as important to
the invention.”). Again, however, “any such disclaimer ‘must be clear’” to overcome the
customary meaning of a disputed claim term. See Voda v. Cordis Corp.,
536 F.3d 1311,
1320 (Fed. Cir. 2008) (quoting Conoco, Inc. v. Energy & Envtl. Int'l, L.C.,
460 F.3d 1349,
1357 (Fed. Cir. 2006)).
Three additional rules of construction related to the specification also require
consideration. First, federal trial judges have been advised not to construe a claim to
exclude a preferred embodiment disclosed in a specification, because “such an
interpretation is rarely, if ever, correct.” Vitronics Corp., 90 F.3d at 1583 (citing Hoechst
Celanese Corp. v. BP Chemicals Ltd.,
78 F.3d 1575, 1581 (Fed. Cir. 1996) (“We share the
district court's view that it is unlikely that an inventor would define the invention in a way
that excluded the preferred embodiment, or that persons of skill in this field would read the
specification in such a way.”)).
Second, when more than one embodiment is disclosed, as a matter of law, the court
“do[es] not interpret claim terms in a way that excludes disclosed examples in the
9
specification.” Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.2d 1295, 1305 (Fed.
Cir. 2007) (cautioning against interpreting a claim term in a way that excludes disclosed
embodiments when that term has multiple ordinary meanings consistent with the intrinsic
record); see also
Phillips, 415 F.3d at 1323 (recognizing that the embodiments in a patent
often are examples intended to teach a person of ordinary skill in the art how to make and
use the invention, but should not be construed to limit the invention only to a specific
embodiment). But, where a claim term must be interpreted in a manner inconsistent with
its ordinary meaning in order to cover all of the disclosed embodiments, and the applicant
has not acted as his own lexicographer to “alter the ordinary meaning of the term,” such a
term may be interpreted to claim less than all of the embodiments. See Helmsderfer v.
Bobrick Washroom Equip., Inc.,
527 F.3d 1379, 1383 (Fed. Cir. 2008) (holding that, the
term “partially” should not be interpreted inconsistent with its ordinary meaning to include
“totally” in order to encompass all of the disclosed embodiments unless the applicant had
acted as his own lexicographer to alter the term’s ordinary meaning); see also Baran v.
Med. Device Tech., Inc.,
616 F.3d 1309, 1315–16 (Fed. Cir. 2010) (holding that, if a term
is used in the specification to differentiate between disclosed embodiments, and the term
is used in a claim invention, it is proper to construe the claim to cover only some of the
disclosed embodiments, because the differentiation concedes coverage of only certain
embodiments).
Third, although the specification is important in discerning the meaning of the
claims, federal trial judges must not “import” or graft limitations from the specification
into the claim. See Am. Piledriving Equip., Inc. v. Geoquip, Inc., 637 F.3d 1324, 1331
(Fed. Cir. 2011) (reaffirming that “the role of a [federal trial judge] in construing claims is
not to redefine claim recitations or to read limitations into the claim to obviate factual
questions of infringement and validity but rather to give meaning to the limitations actually
contained in the claims, informed by the written description, the prosecution history[,] if
in evidence, and any relevant extrinsic evidence”); Kara Tech. Inc. v. Stamps.com Inc.,
582
F.3d 1341, 1348 (Fed. Cir. 2009) (“The patentee is entitled to the full scope of his claims,
and we will not limit him to his preferred embodiment or import a limitation from the
specification into the claims.”); SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys.,
Inc.,
242 F.3d 1337, 1340 (Fed. Cir. 2001) (characterizing importing limitations from the
specification into the claims as “one of the cardinal sins of patent law”); DSW, Inc. v. Shoe
Pavilion, Inc.,
537 F.3d 1342, 1347 (Fed. Cir. 2008) (holding that “[federal trial judges]
cannot alter what the patentee has chosen to claim as his invention, that limitations
appearing in the specification will not be read into claims, and that interpreting what is
meant by a word in a claim is not to be confused with adding an extraneous limitation
appearing in the specification, which is improper”) (internal quotation marks omitted).
c. The Prosecution History.
As the final form of intrinsic evidence, “the prosecution history can often inform
the meaning of the claim language by demonstrating how the inventor understood the
invention and whether the inventor limited the invention in the course of prosecution,
making the claim scope narrower than it would otherwise be.” Phillips, 415 F.3d at 1317;
see also Digital Biometrics, Inc. v. Identix, Inc.,
149 F.3d 1335, 1344 (Fed. Cir. 1998)
(observing that the prosecution history “may contain contemporaneous exchanges between
10
the patent applicant and the [USPTO] about what the claims mean”); Graham, 383 U.S. at
33 (“It is, of course, well settled that an invention is construed not only in the light of the
claims, but also with reference to the file wrapper or prosecution history in the Patent
Office.”).
Under certain circumstances, the prosecution history can even trump the
specification. See Graham, 383 U.S. at 33–34 (holding that claims that were narrowed to
overcome prior art during prosecution may not subsequently be interpreted by the
specification to cover subject matter that was disclaimed before the USPTO); see also
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,
535 U.S. 722, 733–34 (2002)
(“When . . . the patentee originally claimed the subject matter alleged to infringe but then
narrowed the claim in response to a rejection, he may not argue that the surrendered
territory compromised unforeseen subject matter that should be deemed equivalent to the
literal claims of the issued patent.”). For example, prosecution history may preclude “a
patentee from regaining, through litigation, coverage of subject matter relinquished during
prosecution of the application for the patent.”
Id. at 734. In sum, regardless of whether an
examiner agreed with an applicant’s statements during prosecution, any argument made
“may lead to a disavowal of claim scope[.]” Microsoft Corp. v. Multi-Tech Systems, Inc.,
357 F.3d 1340, 1350 (Fed. Cir. 2004) (“We have stated on numerous occasions that a
patentee’s statements during prosecution, whether relied on by the examiner or not, are
relevant to claim interpretation.”).
3. A Federal Trial Judge May Examine Extrinsic Evidence, But
Only In Limited Circumstances.
Finally, as the United States Supreme Court acknowledged, “[i]n some cases . . .
the [federal trial] court will need to look beyond the patent’s intrinsic evidence and to
consult extrinsic evidence in order to understand, for example, the background science or
the meaning of a term in the relevant art during the relevant time period.” Teva Pharms.
USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015). But, if the court’s consideration of
the intrinsic evidence resolves all “genuine ambiguit[ies]” about the meaning of a patent
claim, as a matter of law, it is improper for the judge to rely on extrinsic evidence, i.e.,
evidence outside of the patent record, such as expert and inventor testimony, dictionaries,
learned treatises, and articles. See Vitronics
Corp., 90 F.3d at 1584 (“Only if there were
still some genuine ambiguity in the claims, after consideration of all available intrinsic
evidence, should the trial court have resorted to extrinsic evidence . . .”). The United States
Court of Appeals for the Federal Circuit addressed this issue in Key Pharmaceuticals v.
Hercon Laboratories Corporation,
161 F.3d 709 (Fed. Cir. 1998):
This court has made strong cautionary statements on the proper use of
extrinsic evidence, which might be misread by some members of the bar as
restricting a trial court’s ability to hear such evidence. We intend no such
thing. To the contrary, trial courts generally can hear expert testimony for
background and education on the technology implicated by the presented
claim construction issues, and trial courts have broad discretion in this
regard.
11
Furthermore, a trial court is quite correct in hearing and relying on expert
testimony on an ultimate claim construction question in cases in which the
intrinsic evidence (i.e., the patent and its file history—the “patent record”)
does not answer the question.
What is disapproved of is an attempt to use extrinsic evidence to arrive at a
claim construction that is clearly at odds with the claim construction
mandated by the claims themselves, the written description, and the
prosecution history, in other words, with the written record of the patent.
Id. at 716 (citations omitted); see also Zodiac Pool Care, Inc. v. Hoffinger Indus., Inc.,
206
F.3d 1408, 1414 (Fed. Cir. 2000) (cautioning federal trial judges to “turn[] to extrinsic
evidence only when the intrinsic evidence is insufficient to establish the clear meaning of
the asserted claim”).
IV. THE COURT’S CONSTRUCTION OF CERTAIN PATENT CLAIMS
TERMS REQUESTED BY THE PARTIES.
A. United States Patent No. 7,032,492.
The parties have requested that the court construe certain terms in claim 1, a process
claim3 of the ’492 patent, (’492 patent, col. 9, ll. 59–col. 10, ll. 12).
1. Claim 1.
Claim 1 of the ’492 patent describes:
A process for manufacturing an ammunition article, comprising:
a) providing a cartridge including a projectile disposed in a casing and
presenting a joint between the projectile and casing;
b) applying to the joint a sealingly effective amount of a light curable
sealant composition (i) is not capillary active at the joint, (ii) has a
viscosity in a range from about 75 to 1000 centipoise at 25 ºC, and
(iii) is UV-curable in exposure to ultraviolet radiation, curingly
effective-light therefor, within a time period of from about 0.01 to
about 0.5 second, wherein a force of between 45 and 200 pounds is
required to be applied to separate projectile from said casing after
3
“Process Claims—Prior art device anticipates a claimed process if the device
carries out the process during normal operation.” MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2112.02 (9th ed. Nov. 2015); see also Joy Techs., Inc. v. Flakt,
Inc., 6 F.3d 770, 773 (Fed. Cir. 1993) (“[P]rocess claims . . . are infringed only when the
process is used.”).
12
cure of the light-curable sealant composition, and wherein the light
curable sealant composition is not anaerobically curing; and
c) exposing the applied sealant composition to curingly effective light
comprising said UV radiation for a time period of about 0.01 to
about 0.5 second.
’492 patent, col. 9, ll. 59–col. 10, ll. 12.
B. Construction Of The Disputed Terms.
1. “A Joint Between The Projectile And The Casing.”
The parties proposed the following competing constructions of the term “a joint
between the projectile and the casing” for the court’s consideration:
’492 Patent
Term(s) Plaintiff’s Proposed The Government’s Proposed
Construction Construction
“a joint between the No construction “the immediate circumferential
projectile and the casing” necessary. intersection forming a line or
seam between (1) the bullet and
Claim 1(a) In the alternative, “the (2) the distal end opening of the
interface or seam where casing, which does not extend
the bullet is inserted into down the interior neck of the
the end of the casing” casing toward the shoulder”
a. Plaintiff’s Proposed Construction.
Plaintiff proposes that since the term “a joint between the projectile and the casing”
is the interface between the bullet and the casing, it does not require any construction. Pl.
Br. at 12. In the alternative, the claim should be construed as “the interface or seam where
the bullet is inserted into the end of the casing.” Pl. Br. at 12. In support of this
construction, the specification states:
[A]n assemble ammunition article having a joint at the intersection of the
surface bounding the distal opening of the casing and the immediately
adjacent side surface of the projectile. This joint between the contacting
surfaces thus forms an interface of the projectile and casing in the
assembled ammunition article, and such joint extends circumferentially
about the projectile and casing at their intersection.
13
’492 patent, col. 4, ll. 3–12 (emphasis added).
Therefore, although the sealant is applied around the upper edge of the joint, the
joint itself extends into the casing along the neck, where the side surface of the bullet and
the inside neck surface of the casing touch each other. Pl. Br. at 13. Contact between two
surfaces is a surface, not a line. Pl. Br. at 13.
In addition, anyone skilled in the art would know the shape and location of the joint
that is in contact with the bullet and casing, without any need for a description of “joint”
between the two objects. Pl. Resp. Br. at 4.
b. The Government’s Proposed Construction.
The Government asks the court to construe “a joint between the projectile and the
casing” as “the immediate circumferential intersection forming a line or seam between (1)
the bullet and (2) the distal end opening of the casing, which does not extend down the
interior neck of the casing toward the shoulder.” Gov’t Br. at 13. Plaintiff’s proposed
claim construction for “a joint between the projectile and the casing” erroneously expands
the scope of the term beyond the clear meaning in the specification. In addition, other
intrinsic evidence equates the claimed “joint” with “interface,” “line,” and “seam,” since
the prosecution history reflects that:
The manufacture of an ammunition article in accordance with the present
invention involves engaging a projectile with a casing . . . Such engagement
is carried out to position the projectile in the opening at the distal end of
the casing, and form an assembled ammunition article having a joint at the
intersection of the surface bounding the distal opening of the casing and the
immediately adjacent side surface of the projectile. This joint between the
contacting surfaces thus forms an interface of the projectile and casing in
the assembled ammunition article, and such joint extends
circumferentially about the projectile and casing at their intersection.
’492 patent, col. 4, ll. 1–12 (emphasis added and bolded).
According to the applicant of the ’492 patent (“Applicant”), the joint is a
“circumferential[]” “intersection” between the bullet and “the distal end of the casing.”
’492 patent, col. 4, ll. 1–12. During prosecution, however, the Applicant asserted that the
location of the “projectile/casing interface joint” should be narrowly construed to disclose
the manufacture ammunition using a UV-light curable adhesive. Pl. Br. Ex. 2 at 153–54
(8/22/05 Office Action Resp.); see also Pl. Br. Ex. 2 at 262–70 (Klein reference).
During the claim construction hearing to distinguish the ’492 patent from
the Klein prior art, Plaintiff also advised the court that:
Because the neck of the casing has some height to it, the bullet . . . contacts
the inside edge of that neck along some distance. The joint is not the entire
contact between the bullet and the neck of the casing; it is just where the
14
edge of the—what we’re calling the distal end of the opening, which is just
the top part of the [neck], where that hole, on its edge, contacts the bullet.
3/17/17 Tr. at 35, ll. 24–Tr. 36, ll. 7 (emphasis added). These representations, however,
were not disclosed to the USPTO Examiner.
Nevertheless, these representations were consistent with the Government’s
suggested construction that the court must construe a joint between the projectile and the
casing “not extend down the interior neck of the casing towards the shoulder” of the casing.
Gov’t Br. at 17.
c. The Court’s Resolution.
Plaintiff proposes that the term “a joint between the projectile and casing” does not
require construction, because a POSITA would understand its meaning without need for
further description. Pl. Resp. Br. at 3–4. In the alternative, however, Plaintiff proposes
that “a joint between the projectile and the casing” means “the interface or seam where the
bullet is inserted into and the casing.” In addition, Plaintiff argues that the joint extends
into the casing along the neck.
During the claim construction hearing, however, counsel for Plaintiff stated that:
[b]ecause the neck of the casing has some height to it, the bullet, which is
the copper–the solid copper insert into the hollow casing, contacts the inside
edge of that neck along some distance. The joint is not the entire contact
between the bullet and the neck of the casing; it is just where the edge of
the–what we’re calling the distal end opening, which is just the top part
of that mech, where that hole, on its edge, contacts the bullet.
3/17/17 Tr. at 35, ll. 24–Tr. 36, ll. 7 (emphasis added).
As a matter of law, Plaintiff’s counsel’s statements are binding on Plaintiff. See
Oscanyan v. Arms Co., 103 U.S. 261, 263–64 (1880) (holding counsel’s statement during
a trial binding on client); see also Jones v. Morehead,
68 U.S. 155, 165 (1835) (holding
that a client is bound by his counsel’s statements, despite evidence to the contrary); Nat’l
Ass’n of Life Underwriters, Inc. v. C.I.R.,
30 F.3d 1526, 1530 (D.C. Cir. 1994) (holding
that a party is bound by prior admission, despite later evidence that is contrary to prior
admissions).
In this case, after reviewing the intrinsic evidence of the ’492 patent, including the
claims, the written description, and the prosecution history, and Plaintiff’s counsel’s
statement, the court has determined that the term “a joint between the projectile and the
casing” means “the point where the circumferential edge of the distal end opening of the
casing contacts the bullet after the bullet is inserted into the casing, but does not extend
down the interior neck of the casing.”
15
2. “Not Capillarily Active At The Joint.”
The parties proposed the following competing constructions of the phrase “not
capillarily active at the joint,” for the court’s consideration:
’492 Patent
Term(s) Plaintiff’s Proposed The Government’s Proposed
Construction Construction
“not capillarily active at “the sealant does not “does not penetrate by wicking
the joint” enter the munition past the joint”
through the joint by
Claim 1(b)(i) capillary action”
a. Plaintiff’s Proposed Construction.
Plaintiff proposes that the phrase “not capillarily active at the joint” should be
construed as, “the sealant does not enter the munition through the joint by capillary action.”
Pl. Br. at 16. This construction is evident from the patent and prosecution history that
states:
Viscosity of the sealant formulations in the broad practice of the invention
can be at any suitable level consistent with effective usage of the sealant
formulation. In general, the viscosity should not be so low as to allow the
sealant liquid to penetrate through the projectile/casing interface into the
interior casing compartment by capillary action, and the viscosity should
not be so high as to make application of the sealant to the joint of the
ammunition article impractical.
It therefore is abundantly clear that “non-capillarily active” in reference to
the applied sealant means that the sealant does not penetrate into the interior
casing compartment by capillary action.
It is also apparent that an applied sealant that does not penetrate into the
interior casing compartment by capillary action is “capillarily active.”
Pl. Br. Ex. 2, at 105–06 (2/18/04 Office Action Resp.).
In this case, the specification of the ’492 patent discloses that, if the sealant comes
in contact with the gun powder, the sealant would interfere with both the desired
homogeneous character and firing of the powder charge, and the sealant would be
16
deposited in the weapon during firing and would not ignite. ’492 patent, col. 1, ll. 60–65.
The invention, however, is based on a discovery that the interface between the projectile
and casing of the ammunition article can be efficiently sealed (’492 patent, col. 3, ll. 31–
40), and the viscosity of the sealant formulation in the practice of the invention can be at
any suitable level, so long as it is consistent with usage of the sealant formulation (’492
patent, col. 6, ll. 43–45).
In the alternative, Plaintiff will accept the Government’s construction, “the sealant
does not penetrate into the interior casing compartment by wicking.” Pl. Resp. Br. at 5.
The specification and prosecution history explain that “‘penetration into the interior of the
casing compartment’ is the measure of capillary action, not just some insubstantial
‘wicking past the joint.’” Pl. Resp. Br. at 6. If “joint,” however, is defined as the “entire
area where the bullet and the interior neck of the casing touch,” then “wicking past the
joint” means “into the interior compartment of the casing.” Pl. Resp. Br. at 6.
b. The Government’s Proposed Construction.
The Government asks the court to construe “not capillarily active at the joint,” as
“does not penetrate by wicking past the joint.” Gov’t Br. at 17. During prosecution of the
’492 patent, the Applicant repeatedly used the term “wicking” to describe the movement
of sealant through capillary action, past the joint line. Gov’t Br. at 18. Examples of this
include, when the Applicant explained to the USPTO Examiner that “the anaerobic sealant
taught by [the Brede ’386 patent] cures on application by virtue its wicking action into the
joint, as a capillary active sealant which then is exposed to anaerobic conditions in the
joint.” Pl. Br. Ex. 2, at 67 (8/13/04 Office Action Resp.) (emphasis added), and by applying
the teaching of the Brede ’386 patent, “the capillary or wicking action at the joint obviates
the need for any movement between the applicator and the ammunition article.” Pl. Br.
Ex. 2, at 65 (8/13/04 Office Action Resp.) (emphasis added).
The Government’s construction of the disputed term should be adopted, because
the prosecution history teaches the claim language by describing how the inventor
understood the invention at the time of filing. In addition, Plaintiff’s proposed construction
is too broad. Gov’t Br. at 19. Plaintiff’s proposed construction only prohibits sealants that
move by capillary action through the joint and into the munition. Gov’t Br. at 19.
Therefore, it necessarily includes prior art subject matter surrendered during prosecution.
Gov’t Br. at 19.
In addition, because “wicking” and “capillary action” were considered to be
synonymous by the Applicant during prosecution and Plaintiff’s proposed construction is
too broad, the Government’s construction of the disputed term should be adopted.
c. The Court’s Resolution.
Plaintiff proposes that “not capillarily active at the joint” means “the sealant does
not enter the munition through the joint by capillary action”; the Government proposes that
“not capillarily active at the joint” means “does not penetrate by wicking past the joint.”
During prosecution, the Applicant informed the USPTO Examiner that:
17
It therefore is abundantly clear that “non- capillarily active” in reference to
the applied sealant means that the sealant does not penetrate into the interior
casing compartment by capillary action.
It also is apparent that an applied sealant that does penetrate into the interior
casing compartment by capillary action is “capillarily active.”
Pl. Br. Ex. 2 at 106 (2/18/05 Office Action Resp.).
During prosecution, the Applicant also used the terms “wicking” and “capillary
active” synonymously. For example, the Applicant stated “by applying a capillarily active
anaerobic sealant as taught by Brede, the capillary or wicking action at the joint obviated
the need for any movement between the applicator and the ammunition article” (Pl. Br. Ex.
2 at 65), and “[t]his is apparent from the fact that the anaerobic sealant taught by Brede
cures on application by virtue of its wicking action into the joints, as a capillarily active
sealant which then is exposed to anaerobic conditions in the joint” (Pl. Br. Ex. 2 at 67
(8/13/04 Office Action Resp.)).
Therefore, after reviewing the intrinsic evidence of the ’492 patent, including the
claims, the written description, and the prosecution history, the court has determined that
a person of ordinary skill in the art of munitions manufacturing would understand the term
“not capillarily active at the joint” to mean “the sealant does not penetrate into the interior
of the casing compartment by capillary action or wicking.”
3. “Not Anaerobically Curing.”
The parties proposed the following competing constructions of the term “not
anaerobically curing” for the court’s consideration:
’492 Patent
Term(s) Plaintiff’s Proposed The Government’s Proposed
Construction Construction
“not anaerobically “The curing step used in “does not cure in the absence of
curing” the process does not air/oxygen, and is devoid of
require the removal of components or materials that
Claim 1(b)(iii) air. This step does not will cure in the absence of
exclude the use of a air/oxygen”
sealant which could be
anaerobically cured.”
18
a. Plaintiff’s Proposed Construction.
Plaintiff proposes that the term “not anaerobically curing” should be construed as
“[t]he curing step used in the process does not require the removal of air. This step does
not exclude the use of a sealant which could be anaerobically cured.” Pl. Br. at 20. The
term “not anaerobically curing” is both a process claim and a process limitation. As such,
the “not anaerobically curing” limitation does not modify the sealant, but the process step
of curing. Pl. Br. at 20. Therefore, “anaerobically curing” means the active removal of air
to effect a curing process. In contrast, “not anaerobically curing” is a process that does not
require the removal of air to cure. Pl. Resp. Br. at 8.
Contrary to the Government’s assertions, Plaintiff did not distinguish claim 1(b)(iii)
of the ’492 patent from the Brede ’386 patent on the basis that the claims are “devoid” of
any “anaerobically curing” sealants or components. Pl. Resp. Br. at 8. Nor did Plaintiff
distinguish the fact that one needs to remove all components or materials that could be
anaerobically curable to address the deficiency in the Brede ’386 patent. Pl. Br. at 21. In
fact, contrary to the Government’s assertions, the ’492 patent specification teaches that the
UV curable sealant can have anaerobic components, but it is preferred that the sealant has
none. ’492 patent, col. 5, ll. 30–34 (“The light-curable sealant employed in the general
practice of the invention can be any suitable type. Preferably, the light-curable sealant
composition is devoid of anaerobic sealing component(s).”).
Therefore, because of the inherent meaning of term “anaerobically curing” and
misrepresentations of the Government, the court should adopt Plaintiff’s construction of
the disputed term “not anaerobically curing.”
b. The Government’s Proposed Construction.
The Government asks the court to construe “not anaerobically curing” as “does not
cure in the absence of air/oxygen, and is devoid of components or materials that will cure
in the absence of air/oxygen.” Gov’t Br. at 23. During prosecution of the ’492 patent, the
Applicant distinguished the claims in the ’492 patent from the prior art, on the grounds that
the ’492 patent was “devoid” of any “anaerobically curing” sealants or components thereof.
Gov’t Br. at 24. Specifically, the Applicant asserted that “Brede teaches away from use of
light-curing sealants by specific direction to use anaerobic sealants.” Pl. Br. Ex. 2, at 65
(8/13/04 Office Action Resp.). Therefore, based on this intrinsic evidence, the term “not
anaerobically curing” means that the claimed sealant composition “does not cure in the
absence of air/oxygen, and is devoid of components or materials that will cure in the
absence of air/oxygen.” Gov’t Br. at 24–25.
The Government’s proposed construction is also consistent with the extrinsic
evidence. Gov’t Br. at 25. Under the ASTM International Guidelines,4 an “an anaerobic
4
ASTM International “is one of the largest voluntary standards developing
organizations in the world. [It is] a not-for-profit organization that provides a forum for
the development and publication of international voluntary consensus standards for
19
adhesive” is defined as one “kept in the uncured state by oxygen” and “cures in the absence
of oxygen when exposed to metal ions, especially copper or iron.” Pl. Br. Ex. 2, at 284
(ASTM Stand.). Consequently, any sealant classified as an “anaerobic adhesive” cannot
be classified as a sealant that is “not anaerobically” curable. Gov’t Br. at 25.
c. The Court’s Resolution.
Plaintiff proposes that “not anaerobically curing” means “the curing step used in
the process does not require the removal of air. This step does not exclude the use of a
sealant which could be anaerobically cured.” Pl. Br. at 8-9. Plaintiff further argues that
the “not anaerobically curing” limitation does not modify the sealant, only the process step
of curing, and sealants devoid of anaerobic sealing component included in the specification
are only included as a preferred method. Pl. Br. at 20; Pl. Resp. Br. at 9. The court
disagrees with Plaintiff’s construction.
During prosecution, the Applicant stated that:
[A]naerobic adhesives behave inconsistently. They can solidify during
application, resulting in the total loss of costly processing equipment. Due
to differences in manufacturing equipment, processing speeds, process
temperature conditions and metals, gaps between cartridges and projectiles
are rarely identical. As a result of this structural variation, anaerobic
adhesives do not seal with a uniform degree of adhesion. Occasionally the
bond of the projectile to the cartridge is too strong, causing the weapon to
explode. When relatively large gaps occur the presence of oxygen can
prevent the cure of the anaerobic adhesive, resulting in an unprotected
cartridge.
The foregoing discussion reflects the failure of the art to satisfactorily
address and resolve the problem of sealing ammunition articles[.]
’492 patent, col. 2, ll. 33–47.
In addition, during prosecution, the Applicant represented to the USPTO Examiner
that the Brede ’386 patent in requiring “the sealant to be (i) anaerobically hardening, (ii)
contain no solvent, and (iii) be capillarily-active[,]” teaches away5 from the ’492 patent
application. Pl. Br. Ex. 2 at 61–62 (8/13/04 Office Action Resp.).
materials, products, systems and services.” ASTM INTERNATIONAL,
http://www.astm.org/ABOUT/faqs.html#what (last visited Aug. 4, 2017).
5
A reference may be said to teach away when a person of ordinary skill,
upon reading the reference, would be discouraged from following the path
set out in the reference, or would be led in a direction divergent from the
path that was taken by the applicant . . . [or] if it suggests that the line of
20
Therefore, after reviewing the intrinsic evidence of the ’492 patent, including the
claims, the written description, and the prosecution history, the court has determined that
a person of ordinary skill in the art of munitions manufacturing would understand the term
“not anaerobically curing” to mean “excludes anaerobically curing and devoid of
anaerobically curing components.”
V. CONCLUSION.
For the reasons discussed herein, the court has determined that the disputed claims
are to be construed, pursuant to this Memorandum Opinion And Order Construing Certain
Claims of United States Patent No. 7,032,492.
IT IS SO ORDERED.
s/ Susan G. Braden
SUSAN G. BRADEN
Chief Judge
development flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicant.
Tec Air, Inc. v. Denso Mfg. Michigan Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999) (internal
citations omitted).
21
COURT APPENDIX:
THE TERMS OF CERTAIN PATENT CLAIMS AGREED BY THE PARTIES
The parties agree to the following constructions with respect to United States Patent No.
7,032,492.
Term(s) Parties’ Proposed Construction
“a projectile disposed in a casing” “a bullet is mounted in the opening at the
distal end of the casing”
(Claim 1(a))
“applying to the joint” “externally applying sealant onto the entire
surface of the joint”
(Claim 1(b))
“a sealingly effective amount” “an amount of sealant that is sufficient to
achieve a moisture barrier”
(Claim 1(b))
“light-curable sealant composition” “sealant that cures to make the moisture
barrier upon exposure to light”
(Claim 1(b))
“viscosity in a range from about 75 to “viscosity in a range from approximately 75
1000 centipoise at 25 ºC” to 1000 centipoise at 25 ºC, to prevent the
sealant from being capillary active at the
(Claim 1(b)(ii)) joint”
“wherein a force of between 45 and 200 “wherein a force of between 45 and 200
pounds is required to be applied to pounds is required to be applied to separate
separate said projectile from said said projectile from said casing”
casing”
Claim 1(c)
22
“curingly effective light comprising “an amount of ultraviolet-radiation (UV)
said UV radiation” light sufficient to cure and make the moisture
barrier”
(Claim 1(c))
“after exposure to a curingly effective “after curing, does not subsequently emit
actinic radiation, does not fluoresce” light upon exposure to an appropriate
secondary ration or light source”
(Claim 11)
“neat” “solvent-free”
(Claim 19)
23
