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Advanced Fiber Technologies Trust v. J&L Fiber Services

September 13, 2010



Plaintiff Advanced Fiber Technologies Trust ("AFT"), a trust organized under the laws of Canada with a principal place of business in Quebec, Canada, brought this action for patent infringement arising under 35 U.S.C. § 271, et seq. against Defendant J&L Fiber Services, Inc. ("J&L"), a Wisconsin corporation, on November 9, 2007. Compl. (Dkt. No. 1). Jurisdiction is predicated on 28 U.S.C. § 1331 and 28 U.S.C. § 1338(a).

AFT alleges that J&L's V-Max screen cylinder infringes upon a patent owned by AFT. See generally Dkt. No. 1. AFT seeks a preliminary and permanent injunction against J&L preventing J&L from further infringement; a finding of such infringement by J&L; damages, treble damages, costs, and attorneys fees; and the recall and destruction of all materials within the control of J&L that infringe on Plaintiff's patent. Compl.

On February 22, 2008, J&L filed its Answer and counterclaim, denying any alleged infringement; contending that the patent is invalid and unenforceable; asserting that Plaintiff's claims are barred; and requesting declaratory judgment as to the reissued patent's invalidity. Dkt. No. 12. Presently before the Court are J&L's Motion for the construction of claim terms (Dkt. No. 45) ("Construction Motion") and Motion for summary judgment (Dkt. No. 50) ("J&L's Summary Judgment Motion"), and AFT's Motion for summary judgment as to infringement (Dkt. No. 33) ("Infringement Motion") and Motion for summary judgment as to validity (Dkt. No. 51) ("Validity Motion").


The instant action involves two patents owned by AFT that are directed to "screen plates, e.g., screen cylinders and flat screen plates, for use, for example, in the pulp and paper industry for screening pulps and to methods for their manufacture." Dkt. Nos. 1, Ex. A; 45, Ex. A. The screen plate was originally described in U.S. Patent No. 5,200,072 ("'072 patent"), see Dkt. No. 1, Ex. A, which issued April 6, 1993 based upon an application filed August 16, 1990.*fn2 AFT SMF Resp. (Dkt. No. 75-2) ¶ 10. AFT purchased the '072 patent in March 2002 from a predecessor in interest, CAE ScreenPlates, Inc. J&L SMF. Resp. (Dkt. No. 39-11) ¶ 13. On September 12, 2003, AFT applied to the Patent Office to reissue the '072 patent. AFT SMF Resp. (Dkt. No. 75-2) ¶ 49. AFT's application included a declaration placing January 1990 as the earliest provable date of invention. Id. ¶ 50. On January 5, 2006, the Patent Office rejected all of the claims, citing Gillespie (U.S. Patent No. 4,276,265) ("Gillespie")*fn3 as a basis for the rejection. Id. ¶ 51. AFT responded to the rejection on May 5, 2006, emphasizing the scope of the applied for patent differed from the Gillespie and restating/clarifying the meaning of certain claim terms in their proposed reissue by way of reference to the Handbook of Pulp and Paper Technology. Id. ¶ 52. On December 18, 2007, the patent was reissued as U.S. Patent No. RE 39,940 ("'940 patent" or "reissue"), see Dkt. No. 45, Ex. A.*fn4 Id. ¶ II.12. On November 9, 2007, shortly after being informed that a reissue was imminent, AFT filed the instant action. Compl.

As early as February 2000, J&L has had knowledge of claims that its V-Max screen cylinder ("V-Max"), which is used to screen pulp for the production of paper, infringes upon the '072 patent; it was initially informed of this alleged infringement by CAE ScreenPlates, Inc. AFT SMF Resp. (Dkt. No. 75-2) ¶ 40. J&L promptly responded on February 23, 200, stating it would investigate the matter. Ultimately, J&L did not alter its product or methods, allegedly because, after thorough investigation, it believed that the '072 patent was invalid and that the V-Max did not, anyhow, infringe on that patent. J&L informed CAE of these beliefs by letter dated December 20, 2001. Id. ¶¶ 41-42. Subsequent to its purchase of the '072 patent, AFT filed several additional notices of infringement with J&L, which again denied the patent's validity or the V-Max's infringement of the patent, and allegedly provided what it claimed to be prior art references in support of its position. Id. ¶¶ 43-45. The dispute culminated with the instant infringement action brought on November 9, 2007, under 35 U.S.C. § 271. Compl. In its Answer and Counterclaim, filed February 22, 2008, J&L denies any infringement and asserts that, at any rate, the '072 patent and '940 reissue (collectively, "the '940 patent") are invalid and/or unenforceable. Dkt. No. 12, ¶¶ 23-25, see also J&L SMF. Resp. (Dkt. No. 39-11) ¶ 13.

In or around April 2008, AFT served its first set of interrogatories on J&L seeking the legal and factual basis for J&L's claims of non-infringement and invalidity, to which J&L responded with preliminary claim charts. See Mesiti Decl. (Dkt. No. 33-12) ¶ 6-7; see also Dkt. No. 60 at 3-4. On March 13, 2009, AFT filed a Motion for summary judgment on the issue of infringement. Dkt. No. 33. Discovery closed August 1, 2009. On September 30, 2009, J&L filed its Motion for the construction of claim terms. Dkt. No. 45. On October 1, 2009, J&L filed its own Motion for summary judgment. Dkt. No. 50. On the same day, AFT filed a Motion for summary judgment on the issue of validity. Dkt. No. 51.


A. The Court Shall Construe all Disputed Terms Identified to Date

AFT asks the Court to prohibit J&L from contesting the meaning of terms not previously identified by J&L in answers to interrogatories served upon it by AFT. AFT argues that J&L's construction request should be denied as untimely and that all disputed terms should have been identified during discovery. See Mem. in Opp'n to Construction Mot. (Dkt. No. 60) ("Opp'n Construction Mot.") at 6-7. J&L counters that the disputed meaning of terms became apparent only after the close of discovery; J&L further contends that the sources underpinning its proposed constructions of disputed terms are objective, non-testimonial sources, and AFT suffers no prejudice from their being raised at this date. Reply Mem. in Supp. Construction Mot. (Dkt. No. 84) at 1.

AFT served interrogatories on J&L asking the latter for the basis of its invalidity and non- infringement arguments, including its proposed claim constructions, see O'Brien Decl., Ex. C (Dkt. No. 60-7) ¶¶ 5-6,11. J&L admits it failed to do so. J&L's failure, however, is not unusual, and it does not present a sufficient basis for estopping J&L from seeking judicial construction of disputed terms identified after the discovery period closed. See SanDisk Corp. v. Memorex Products, Inc., 415 F.3d 1278, 1291-92 (Fed. Cir. 2005); Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1375 (Fed. Cir. 2005). Further, as discussed below, J&L bases its proposed constructions either on 1) the ordinary meaning of claim terms, as evidenced in objective sources that are widely known and available; or 2) the intrinsic evidence of the '940 patent, again publicly available, and most easily accessed by AFT. Thus, AFT suffers no significant prejudice as a result of J&L's failure to update its responses to AFT's interrogatories. SanDisk, 415 F.3d at 1290-92. Finally, AFT has itself recently identified disputed terms. See July 22, 2010 Claim Construction Hearing Transcript (Dkt. No. 106) ("Tr.") 48-49; 53-56. In these circumstances, the Court finds it appropriate to construe all the disputed terms identified to date.

B. Claim Construction Analysis

The interpretation or construction of patent claims is a matter of law reserved for the courts. Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). Courts are thus tasked with determining the meaning of terse or unfamiliar words used in a patent claim, while not changing or expanding the scope of the claimed invention. Gart v. Logitech, Inc., 254 F.3d 1334, 1339 (Fed. Cir. 2001). In construing patent claims, courts are generally to give the terms and phrases being interpreted "their ordinary and customary meaning," Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996), as understood from the perspective of "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). There are exceptions to this general rule, as an inventor may "choose[] to be his own lexicographer and give terms uncommon meanings," Intellicall, Inc., v. Phonometrics, Inc., 952 F.2d 1384, 1387-88 (Fed. Cir. 1992); however,"this must be done with reasonable clarity, deliberateness, and precision" or the ordinary meaning of terms will control. In Re Paulsen, 30 F.3d 1475, 1580 (Fed. Cir. 1994).

Courts are to interpret claim terms primarily based on intrinsic evidence, namely, 1) the language of the claims themselves; 2) the patent's specification; and 3) the prosecution history of the patent. Vitronics, 90 F.3d at 1582; Markman v. Westview Instruments, Inc., 52 F.3d 967, 979-980 (Fed. Cir. 1995). This intrinsic record "usually provides the technological and temporal context to enable the court to ascertain the meaning of the claim to one of ordinary skill in the art at the time of the invention." V-Formation, Inc. v. Benetton Group SpA, 401 F.3d 1307, 1310 (Fed. Cir. 2005) (citations omitted). At times, however, courts may appropriately consider extrinsic evidence such as dictionaries or expert testimony.*fn5 Markman, 52 F.3d at 980. Such evidence may help illuminate the meaning of terms within a relevant art, but it is "less significant than the intrinsic record in determining 'the legally operative meaning of claim language.'" C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004), (quoting Vanderlande Indus. Nederland BV v. Int'l Trade Comm'n, 366 F.3d 1311, 1318 (Fed. Cir. 2004).

A court properly construes patent claims by looking first to the actual words used in the claims, as these define the scope of the invention, and gives those words their ordinary meaning in the relevant art. See Bell Commc'ns Research, Inc. v. Vitalink Commc'n Corp., 55 F.3d 615, 619-20 (Fed. Cir. 1995). Next, a court looks to the context provided by the patent specification, which is perhaps the most probative source for determining the scope of the patent and hence, the meaning of the claim terms. See 35 U.S.C. § 112; Phillips, 415 F.3d at1315-17; Networld, LLC v. Centraal Corp., 242 F.3d 1347, 1352 ("The claims are directed to the invention that is described in the specification; they do not have meaning removed from the context from which they arose."); Vitronics, 90 F.3d at 1582 (the specification usually is dispositive of a term's meaning as it provides the "single best guide" to that meaning). Despite the usefulness of the specification in construction, a claim term should not be limited to only those embodiments described therein. Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906-909 (Fed. Cir. 2004).

A court should next consider the prosecution history, as this "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 (citing Vitronics, 90 F.3d at 1582-83). In the case of a reissue of a patent, the prosecution history includes both the original and subsequent reissue prosecution. See Spectrum Intern, Inc. v. Sterilite Corp., 164 F.3d 1372, 1378-79 (Fed. Cir. 1998). Courts must be caution in using the prosecution history as an aid to claim construction, as that history "cannot be used to limit the scope of a claim unless the applicant took a position before the PTO that would lead a competitor to believe that the applicant had disavowed coverage of the relevant subject matter." Schwing GmbH v. Putzmeister Aktiengesellschaft, 305 F.3d 1318, 1324 (Fed. Cir. 2002); see also York Prods., Inc. v. Central Tractor Farm & Family Ctr., 99 F.3d 1568, 1575-76 (Fed. Cir. 1996) ("a patent applicant only limits claims during prosecution by clearly disavowing claim coverage."); Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1324 (Fed. Cir. 2002) ("claim terms take on their ordinary and accustomed meanings unless the patentee demonstrated an intent to deviate from... [that] meaning... by redefining the term or by characterizing the invention in the intrinsic record using words or expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope."); Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1324-25 (Fed. Cir. 2003) (prosecution disclaimer attaches only where the allegedly disavowing statements made during prosecution are both clear and unambiguous). Finally, a court may consider extrinsic evidence to determine the meaning a person of ordinary skill in the art would attribute to a disputed term. Phillips, 415 F.3d at 1318-19; but see Vitronics, 90 F.3d at 1584 (extrinsic evidence cannot support a construction contrary to that mandated by intrinsic evidence); Markman, 52 F.3d at 983.

C. The Disputed Terms

During the course of discovery the parties identified two terms that require construction, "backing plate" and "screening medium." See Dkt. No. 33. J&L's Construction Motion additionally asks for judicial construction of the preamble to claim 18, and seven terms: "screen plate," "means for releasably connecting," shrink fit," "rivets," "adhesives," "slots" and "openings." Dkt. No. 45. AFT subsequently requested judicial construction of "perforation" and "engagement with." Tr. (Dkt. No. 106) at 48-49; 53-56. The Court shall now turn to these terms.

1. "Screen Plate" is an Assembly of a Screening Medium and a Backing Plate

The Court shall first construe "screen plate," which is found in independent claim 10, and dependent claims 11, 13-17, 32-36, 39.*fn6 J&L proposes that the term "screen plate" (as well as "screen cylinder," which it asserts is synonymous within the patent) should be construed to mean "an assembly of a screening medium and a backing plate." J&L's Mem. in Supp. of Mot. for Claim Construction (Dkt. No. 45-2) ("J&L's Construction Mem.") at 21. AFT proposes that "screen plate" should be construed to mean "a perforated plate utilized on many designs of pulp screening equipment that impedes pulp flow and is instrumental in causing a separation between suspended particles on the basis of their size, shape, and/or flexibility." Opp'n Construction Mot. at 11. AFT, moreover, seeks to construe "screen plate" as synonymous with "screening plate" and "screen cylinder" as synonymous with "screening cylinder." Tr. (Dkt. No. 106) at 49. As to this term, the Court adopts J&L's construction, which is consistent with the claim terms and specification of the '940 patent and has not been disavowed; additionally, the Court rejects AFT's contention that "screen plate" and "screening plate" are synonymous terms and adopts J&L's construction which equates "screening plate" with "screening medium," see Tr. (Dkt. No. 106) at 21.

a. A "Screen Plate" is an Assembly

The claims and specification leave no uncertainty that the term "screen plate" describes an assembly comprising a "screening medium" and a "backing plate." Any construction that does not include this essential feature is contrary to the intrinsic evidence and must be rejected.

Claim 10 describes "[a] screen plate... comprising: a screening medium... and a structural backing plate...." '940 patent, col. 14, Lns. 13-19 (emphasis in original). The specification also requires a construction of "screen plate" that defines this term by reference to its assemblage character: "Screen plate 10 may be formed as a flat screen plate or a screen cylinder as illustrated and is comprised of two different layers, namely a screening layer/plate 12 and a backing layer plate 14." Id., Col. 7, Lns. 61-64. Each preferred embodiment of the present invention similarly notes the "screen plate" as comprising a screening medium and a backing plate. Finally, the specification explicitly identifies "the present invention" as "formed of two separate layers. The first layer comprises a screening plate... and the second layer comprises a backing plate." Id., Col. 2, Lns. 22-25.

The consistent description of "the present invention" as a screen plate comprising two layers, a screening layer and a backing plate makes clear that a "screen plate" must have these two layers. See, e.g., SciMed Life Systems, Inc. v. Advanced Cardiovascular Systems, Inc., 242 F.3d 1337, 1343 (Fed. Cir. 2001) (construing term to include feature characterized as "the present invention"); Honeywell Int'l, Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1318 (Fed. Cir. 2006) (construing claim term to include a fuel filter because of multiple mentions in the written description of a fuel filter as "the present invention"). AFT's proposed construction leaves out this essential feature, focusing instead upon factors such as the type of equipment in which "screen plates" are used and the role they play in that equipment. AFT's construction does not comport with the intrinsic evidence. Thus, a "screen plate" is an assembly of a screening medium and a backing plate.

b. "Screen Plate" and "Screening Plate" are not Synonymous

The Court rejects AFT's assertion that the terms "screen plate" and "screening plate" are synonymous. Tr. (Dkt. No. 106) at 49. AFT's position is inconsistent with the language of the claims themselves and is contrary to the specification. The claims and specification require construing "screening plate" and "screening medium" as equivalents, and as a component part of a "screen plate."

The claim terms indicate that a "screen plate" (used in claim 10 and its dependent claims) is not equivalent to a "screening plate" (used in claim 18 and its dependent claims). Claim 10 describes a "screen plate... comprising: a screening medium... and a structural backing plate...." '940 patent, Col. 14, Lns. 13-19 (emphasis in original). Claim 18 describes "a method of manufacturing a screen... said screen being formed of a screening plate and a backing plate...." Id., Col. 15, Lns.13-15. To construe the terms consistently, the "screen plate" referred to in claim 10 must be equivalent to the "screen" that is the object of the method of manufacture described in claim 18. Claim 10's "screen plate" cannot be synonymous with claim 18's "screening plate," as this would mean that claim 18 describes a method of manufacturing a screen comprising a screening medium, a structural backing plate, and a backing plate. To avoid that construction, the Court finds that "screening plate" is not equivalent to "screen plate" but is equivalent to "screening medium."

The correctness of this construction is confirmed by reference to the specification and extrinsic evidence. Contrary to AFT's assertion that "screen plate" and "screening plate" are synonymous, the specification notes repeatedly that "according to the present invention, there is provided a method of manufacturing a screening plate for use in a screen plate... the screen plate being formed of a screening plate and a backing plate." See, e.g., id., Col. 6, Lns. 12-14, 24-26 (emphasis added). A "screening plate" is clearly a component part that, along with a backing plate, comprise a "screen plate." The term "screening plate" serves the same role and should be construed to describe the same object denoted by the term "screening medium" in the apparatus claims and described in the specification's preferred embodiments. See, e.g., id., Col. 5, Lns. 42-50; 58-65.

Plaintiff's own description of the '940 patent confirms this construction. In his Declaration, Robert Gooding, AFT's Vice President, states that the patent "is directed to screen plates and screen cylinders." Gooding Decl. (Dkt. No. 33-2) ¶ 8. AFT asserts that screen cylinders are a particular (cylindrically curved) type of the broader category of screen plates. See AFT's Mem. in Opp'n to J&L's Post-Claim Construction Hearing Brief (Dkt. No. 113) ("AFT's Post-Hearing Brief") at 18. Gooding states that the patent includes a screen cylinder, a type of screen plate, "formed of at least two pieces: a screening plate... and a backing plate." Gooding Decl. (Dkt. No. 33-2) ¶ 16. This description dovetails with claim 1, which claims a "screen cylinder comprising: a generally cylindrical screening medium... [and] backing plate." (Emphasis added). Gooding, in describing depictions of the '940 patent, refers to "screening medium" and "screening plate" as denoted by the same reference number (12). Id. ¶ 17. Finally, AFT's Opposition to J&L's Construction Motion acknowledges that "the recited claims provide additional structure for a 'screen plate.'" Dkt. No. 60 at 11. Based on the foregoing, the inescapable construction of "screen plate" as well as "screen cylinder" as used in the '940 patent is an assembly comprising a "screening medium," also referred to as a "screening plate" and a backing plate.

2. "Screening Medium" Means a Perforated

Barrier through which Stock is Passed to Remove Oversized, Troublesome, and Unwanted Particles from Good Fiber The term "screening medium" appears in claims 1, 2-8, 10, 11, 13-16, 27-32, 36-37, and 39. J&L proposes that the term be construed in a non-industry specific manner as "a filtering medium for liquid-solid separation." Alternatively, if the Court finds that the '940 patent is limited to the pulp and paper industry, J&L proposes the construction: "a screening element made of a perforated metal plate." J&L Construction Mem. at 22. AFT proposes an industry-specific construction for "screening medium," where that industry is paper and pulp: "a barrier with openings or perforations for passing stock therethrough, which removes oversized, troublesome and unwanted particles from good fiber."Opp'n Construction Mot. at 12-14. The Court largely adopts AFT's construction.

The claims and the specification do not limit the terms of the patent in an industry-specific manner. AFT, however, unambiguously limited the patent's scope during its prosecution of the reissue. The claim terms do not limit the '940 patent to the paper and pulp industry. For example, while independent claim 10 asserts "[a] screen plate for screening pulp," '940 patent, Col. 14, Ln. 13 (emphasis added), no such limitation appears in independent claim 1. See also claim 18 (applying the limitation "for use in screening for pulp"). The fact that the limitation, "for screening pulp" appears in many claims but is absent in others, leads the Court to conclude that the claims themselves do not limit the invention to use in the paper and pulp industry. This conclusion is bolstered by the specification, which begins: "The present invention relates to screen plates, e.g. screen cylinders and flat screen plates, for use, for example, in the pulp and paper industry...." '940 patent, Col. 1, Lns. 11-13 (emphasis added). As with the claims, the preferred embodiments described in the specification at times explicitly note that the embodiment is for use in screening pulp, see, e.g., id., Col., Lns. 35-37; id., Col. 4, Lns. 63-64; id., Col. 5, Lns. 58-60, and at other times express no such limitation, see, e.g., id., Col. 5, Lns. 42--48; id., Col. 6, Lns. 41-53. Giving the claims "their broadest reasonable construction" in light of the specification, see Phillips, 415 F.3d at 1316, the '940 patent does not appear limited to use in the paper and pulp industry. As noted, however, prosecution disclaimer attaches where a patent applicant makes statements that unequivocally disavow the scope of the claims during the prosecution history providing competitors with notice of a narrowed scope of subject matter covered by the invention. Schwing, 305 F.3d at 1324-25.AFT made unmistakable statements during its prosecution of the '940 patent, specifically in response to the Patent Examiner's rejection of the patent as anticipated by the Gillespie. See O'Brien Decl., Ex. B, Parts 25, 29 (Dkt. No. 60-5). The Patent Examiner rejected the application despite his finding that "applicant's claimed invention is merely intended for use in a pulp process." O'Brien Decl., Ex. B, Part 25 (Dkt. No. 60-5). AFT's response to the rejection highlighted that finding, unmistakably denying that the scope of the claimed invention extended beyond pulp and paper. O'Brien Decl., Ex. B, Part 29 (Dkt. No. 60-5) at 20-24. AFT, for example, argued to the Examiner that "[c]learly, the invention recited in claim 1 [which does not explicitly note for use for screening pulp] is a screen cylinder used in the treatment of pulp." Id. at 21. In fact, AFT's entire argument distinguishing the claimed invention as not anticipated by Gillespie emphasizes the former's limited application in the pulp treatment art and insists that the Gillespie is neither directed toward, nor appropriate for, pulp fiber sorting. Id. The prosecution history, thus, evidences a clear and unequivocal disavowal of coverage beyond the pulp treatment industry.

J&L's proposed construction of "screening medium" as "a filtering medium for liquid solid separation" is rejected. The problem with this construction is that once the industry-specific context is embraced, "screening" takes on a specific meaning, namely the separation of solid from solid, and is distinguished from "filtering," which involves liquid-solid separation. J&L's own experts' testimony, a valuable source of extrinsic evidence, confirms this. See, e.g., Hutton Decl., Ex. U, Venditti Dep. (Dkt. No. 51-28) at 71:14-71:24; O'Brien Decl., Ex. P, Seifert Dep. (Dkt. No. 60-21) at 46. Admittedly, AFT never explicitly distinguished the '940 patent as not being a filter, nor distinguished the Gillespie as a filter, rather than a screen. Nevertheless, while the Court is to construe the claim terms in the broadest way reasonable in the context of the specification, the scope of that construction is always constrained by the meaning such terms would be given by one of ordinary skill in the art. Phillips, 415 F.3d at 1316 (citing In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Here, the scope is constrained by the ordinary meaning the term "screening medium" is given in the pulp industry, which, as noted by experts, is distinct from what is meant by "filtering." J&L's construction is, therefore, rejected.

In arguing to the Patent Examiner, AFT asserted that the claim terms have particular meanings in the pulp treatment art and articulated those meanings by way of definitions supplied by the Handbook of Pulp and Paper Technology. O'Brien Decl., Ex. B, Part 29 (Dkt. No. 60-5). Using the Handbook, AFT adopted the following definitions:

SCREEN: Separation device utilizing some type of perforated barrier for removing unwanted material from stock[*] stream.

SCREENING: Process step involving passage of stock[*] through some form of perforated barrier to remove oversize, troublesome and unwanted particles from good fiber.

SCREEN PLATE: Perforated metal plate utilized on many designs of pulp screening equipment that impedes pulp flow and is instrumental in causing separation between suspended particles on the basis of their size, shape, and/or flexibility STOCK: A mixture of pulp and water with or without non-fibrous additives Id. at 21-22. AFT then "submit[ted] that this meaning of the term 'screen plate' in claim 1 is consistent with this meaning in the art." Id. at 22. Curiously, in view of that statement, claim 1, in fact, does not contain the term "screen plate." Rather, claim 1 refers to a screen cylinder, which, as noted, is a cylindrically shaped screen plate. The "screen cylinder" in claim 1, as with all mentioned screen cylinders and screen plates in the '940 patent, is described as an assembly of a "screening medium"-- which the Court finds is synonymous with "screening plate"-- and a "backing plate." The Court is thus left with two options as to what AFT is referring to when it argues that the term "screen plate" in claim 1 is consistent with the definition it argued to the Examiner: 1) "screen plate" in this argument may refer to the "screen cylinder" claimed in claim one; or 2) "screen plate" in this argument may refer to the "screening medium" that is one of the two components of the assembly that comprises the "screen cylinder."

The first option cannot be correct. A screen cylinder is a type of screen plate. '940 patent, Col. 1, Lns. 12-13. However, if the screen cylinder referred to in claim 1 is construed as a "perforated metal plate... that impedes pulp flow and is instrumental in causing separation between suspended particles on the basis of their size, shape, and/or flexibility" then that claim actually results in an assembly of three elements, rather than the two that are clearly required by the claims and the specification. That is, if the screen cylinder in claim 1 is defined as a "perforated metal plate... that impedes pulp flow and is instrumental in causing separation between suspended particles on the basis of their size, shape, and/or flexibility," which is itself comprised of a "barrier with openings or perforations for passing stock therethrough which removes oversized... particles from good fiber"*fn7 and a backing plate, then this claim describes a three-part assembly that is unlike the two-part assembly consistently and repeatedly described in the specification. See, e.g., '940 patent, Col. 2, Lns. 22-23 ("the present invention provides a screen of two separate layers"). The resulting incongruence between claim 1, so construed, and the specification would render claim 1 invalid under 35 U.S.C. § 112. See 35 U.S.C. § 112 (requiring a specification that "shall contain a written description of the invention"). The same difficulty emerges if these constructions are applied to independent claim 10.

If, however, the definition of "screen plate" argued by AFT to the Patent Examiner and submitted to the Examiner as being consistent with its (non)use in claim 1 are applied to the term "screening medium," a more coherent result obtains. This option assumes that, in this instance, AFT mistakenly refers to "screen plate" when in fact it means "screening plate," which is equivalent to screening medium. While applying this assumption results in a coherent claim construction, it does not evidence a clear intent to deviate from the ordinary meaning of screening medium nor rest upon "words or expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope." Teleflex, 299 F.3d at 1324. Relying upon such unclear prosecution history to define the term "screening medium" as metal perforated plate to that term, as J&L proposes, is inappropriate. See id.; Omega Eng'g,, 334 F.3d at 1324.

A third option for construction of "screening medium" is available by reference to extrinsic material, namely the Handbook of Pulp and Paper Technology used by AFT during prosecution of the patent. It defines "screening" as a "process step involving passage of stock[*] through some form of perforated barrier to remove oversize, troublesome and unwanted particles from good fiber."Thus, "screening medium" is properly construed as the medium employed in this "process step," which is identified in the definition as a "perforated barrier." Unlike AFT's proposed construction, the Handbook does not provide for "openings" as well as "perforations" and the Court sees no reason to adopt this additional characteristic. Similarly, the definition does not limit the medium to metal, nor do the claim terms and specification, see, e.g., '940 patent, claim 21 (allowing for a ceramic screening medium); id., Col. 11, Lns. 63-65. Hence, J&L's ...

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