The opinion of the court was delivered by: David E. Peebles U.S. Magistrate Judge
REPORT AND RECOMMENDATION
Plaintiff Integrated Liner Technologies, Inc. ("ILT"), an Albany, New York based commercial manufacturer of caps for use to seal containers designed primarily to house liquid medial or scientific samples for testing, has commenced this patent infringement suit against defendants Specialty Silicone Products, Inc. and SSP, Inc. (collectively, "SSP"), both of which are headquartered in Ballston Spa, New York and together compete with ILT.*fn1 At issue in the action are two related patents, a product patent and a method patent, both of which concern open-top caps with elastomer septums bonded to the caps on the underside surface.
At the direction of the court the parties conferred and were able to agree on the construction of certain of the terms contained within the claims of the two patents in suit. Despite those efforts, however, four claim terms remain in dispute, and the parties have requested the court's assistance in construing those four terms. In light of that request, District Judge Gary L. Sharpe has referred the matter to me for issuance of a report and recommendation regarding claim construction. The following constitutes my reported findings and recommendations, which are based upon comprehensive submissions from the parties and a claim construction hearing that was conducted on February 15, 2011.
At issue in this case are two patents, both of which list Alan R. Gee,
William R. Delaney, and Paul M. Petrosino as inventors and have been assigned to ILT. The patents in suit relate to construction of a cap designed to allow the deposit and withdrawal of a sample into a bottle, vial, or other similar type container by way of a needle inserted through the septum of the cap. The two patents are related, and both trace their roots to a patent application filed on December 5, 1994. The specifications and drawings contained in both patents are virtually identical.
The technology disclosed in the two patents encompasses the bonding of an elastomer, such as a silicone rubber, to the inside surface of an inert plastic or metal cap without use of an adhesive or other substance potentially capable of contaminating any samples to be held in the vessel. The first of those patents, No. 5,647,939 (the "'939 Patent"), was issued by the United States Patent and Trademark Office ("PTO") on July 15, 1997 and is entitled "Method of Bonding a Cured Elastomer to Plastic and Metal Surfaces". The second, No. 6,234,335 (the "'335 Patent"), was issued on May 22, 2001 and is entitled "Sealable Container and Open Top Cap with Directly Bonded Elastomer Septum". The caps associated with ILT's patented technology are depicted in figures 1 (top view) and 1A (cross section) of the '939 and '335 Patents, as follows:
The '939 Patent discloses a method of securing an elastomer to a plastic or metal cap, teaching a method of bonding which entails ionization of the two surfaces to be bonded -- the elastomer and the inner surface of the plastic or metal cap -- and applying pressure to form a direct bond between the two surfaces. '939 Patent at 1:6-7; see also id. at 2:52-65. According to the patent, the required ionization can be accomplished through a variety of methods, including by treatment "with a flame, corona or plasma discharge as well as by radiation or high intensity UV light." Id. at 2:66-67. The '335 Patent, the sister product patent, describes the finished cap resulting from use of the ionization bonding method disclosed in the '939 Patent.
A. Defendants' Motion To Strike
Before addressing the issue of claim construction, as a preliminary matter I must first consider a motion by SSP to strike portions of a declaration offered by ILT's expert, Patrick T. Mather, Ph. D. Dr. Mather did not offer opinions in support of plaintiff's opening Markman*fn2 brief. He did, however, provide a declaration in response to defendants' opening submission. See Dkt. No. 49-1. In its motion, SSP asserts that certain portions of that declaration set forth opinions that are not strictly limited to rebutting opinions offered by SSP's expert, R. J. Del Vecchio, and therefore should have been disclosed as part of ILT's initial submission. Dkt. No. 45-3.
The protocol for identifying disputed claim terms and presenting the parties' positions regarding those terms to the court was specified in an order issued on September 17, 2010. Dkt. No. 43. That order required, inter alia, the simultaneous exchange of proposed constructions of any disputed term, together with an identification of all references from the intrinsic evidence that supports that construction, and the identification of any extrinsic evidence known to the party on which it intends to rely either to support its proposed construction or to oppose the other party's proposed construction, including but not limited to, as permitted by law, dictionary definitions, citations to authoritative treatises and prior art, and testimony of all witnesses including experts.
September 17, 2010 Order (Dkt. No. 43) ¶ 6 (Emphasis added). The procedures specified envisioned an orderly presentation of the parties' positions to the court.
Plaintiff's initial Markman submission included various items of extrinsic evidence, but did not incorporate an expert declaration. See Dkt. No. 46. Defendants' initial offering, in contrast, did contain a declaration in which their expert offered opinions concerning the four patent claim terms in issue. Dkt. No. 45-3. Under the guise of rebutting that declaration, ILT later submitted to the court a declaration from Dr. Mather, its expert. Dkt. No. 49-1.
Upon review of Dr. Mather's declaration, I find that certain portions set forth opinions that could appropriately be viewed as rebutting those of defendants' expert. Many of Dr. Mather's views, however, are not and should have been disclosed with plaintiff's opening submission. For this reason, I will recommend that paragraphs 23, 26, 28, 33, 34, and 36 of the Mather Declaration be stricken. Vona v. Schindler Elevator Corp. Mgmt., No. 05-CV-0131, 2009 WL 2152309, *7-8 (W.D.N.Y. Jul. 14, 2009); see also Oceans Cuisine, Ltd. v. Fishery Products Int'l, Inc., No. 05-CV-3613, 2006 WL 1071578, at *5-6 (E.D.N.Y. Apr. 21, 2006).
B. Claim Terms In Dispute
ILT alleges the defendants infringed eighteen of the twenty-one claims contained within the '335 patent and nineteen of twenty-four claims of the '939 Patent. Claim one of the '335 Patent serves as a useful backdrop for analysis of the parties' claim construction dispute. That portion of the '335 Patent claims:
1. A sealing element comprising: a cap having a top with an opening therein; and a septum formed separately from said cap and comprising an elastomer, the elastomer having an ionized bonding surface directly bonded to an ionized interior surface of said cap thereby occluding the opening in said top and wherein there is no layer of adhesive or plastic material between said bonding surface and said interior surface. '335 Patent, Claim 1. The method corresponding to that product is described in claim 1 of the '935 Patent. Certain of the subsequent dependent claims in both patents provide for the addition of a primer to the interior cap surface prior to bonding. See, e.g., '335 Patent, Claims 4-7; '939 Patent Claims 3-6.
As a pre-cursor to adjudication of the various infringement claims and defenses raised in the action, the parties have conferred and settled on definitions to be applied to certain claim terms within the two patents, including "in contact", "intervening layer", and "cured elastomer"/"elastomer". They differ, however, as to the proper definitions to be attributed to the terms "primer", "adhesive", "bond directly"/"directly bonded", and "layer".
C. Claim Construction: Legal Framework Patent claim construction represents an issue of law to be decided by the court. Markman, 52 F.3d at 979; Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1304 (Fed. Cir. 1999) (citing Markman). When engaged in patent construction, a court must define claim terms as one of ordinary skill in the relevant art would understand and interpret them in the context of the entire patent, including the specification. Markman, 52 F.3d at 986; see also Netcraft Corp. v. eBay, Inc., 549 F.3d 1394, 1396-97 (Fed. Cir. 2008); K-2 Corp. v. Salomon S.A.,191 F.3d 1356, 1365 (Fed. Cir. 1999).
1. General Claim Construction Principles Perhaps the most comprehensive discourse to date regarding the claim construction calculus is found in the Federal Circuit's en banc decision in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), cert. denied, 546 U.S. 1170, 126 S. Ct. 1332 (2006). In Phillips, though with extensive illuminating discussion regarding the relative importance of intrinsic and extrinsic evidence, the Federal Circuit in essence endorsed its earlier decision in Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996), previously regarded by the courts and patent practitioners as defining the contours of the claim construction inquiry. Phillips, 415 F.3d at 1324.
The principal teaching of Phillips -- and not a significant departure from earlier claim construction jurisprudence -- is that the claims of a patent define the scope of protection afforded to the inventor. Phillips, 415 F.3d at 1312. It therefore follows that the language of a claim itself generally provides the most definitive source of enlightenment concerning the intended meaning of disputed terms. Vitronics, 90 F.3d at 1582. Words contained within a patent normally should be given their ordinary and customary meaning, considered from the perspective of a person of ordinary skill in the art in question at the time of the invention -- that is, the effective filing date of the patent application. Phillips, 415 F.3d at 1313 (citing, inter alia, Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004)).
While it is true that the words of a patent claim will generally control, they should not be interpreted in isolation, in disregard of other portions of the patent; instead "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." Phillips, 415 F.3d at 1313. In this regard a patent specification, which some liken to an internal dictionary, must be carefully reviewed to determine whether, for example, the inventor has used a particular term in a manner inconsistent with its ordinary meaning. Id. at 1313-14; see also Vitronics, 90 F.3d at 1582 (citing Markman,52 F.3d at 979).
A patent's specification often constitutes the "single best guide to the meaning of a disputed term." Vitronics, 90 F.3d at 1582. When resorting to a patent's specification for guidance with respect to disputed claim terms one must consider it as a whole, and all portions should be read in a manner that renders the patent internally consistent. Budde v. Harley-Davidson, Inc., 250 F.3d 1369, 1379-80 (Fed. Cir. 2001). "[W]hile it is true that claims are to be interpreted in light of the specification and with a view to ascertaining the invention, it does not follow that limitations from the specification may be read into the claims[,]" Sjolund v. Musland, 847 F.2d 1573, 1581 (Fed. Cir. 1988) (emphasis in original), "[n]or should particular embodiments in the specification be read into the claims; the general rule is that the claims of a patent are not limited to the preferred embodiment." Cornell Univ. v. Hewlett-Packard Co., 313 F. Supp. 2d 114, 126 (N.D.N.Y. 2004) (Mordue, C.J.) (citing, inter alia, Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1204 (Fed. Cir. 2002)).
In addition to the claim terms themselves and the patent's specification, a third category of relevant intrinsic evidence worthy of consideration is the history surrounding prosecution of the patent. That history, which is customarily though not always offered to assist a court in fulfilling its claim construction responsibilities, is generally comprised of the complete record of proceedings before the PTO including, significantly, any express representations made by the applicant regarding the intended scope of the claims being made, and an examination of the prior art.*fn3 Vitronics, 90 F.3d at 1582-83. Such evidence, which typically chronicles the dialogue between the inventor and the PTO leading up to the issuance of a patent and thus can act as a reliable indicator of any limitations or concessions on the part of the applicant, oftentimes proves highly instructive on the issue of claim construction. Philips, 415 F.3d at 1313 ("We cannot look at the ordinary meaning of the term . . . in a vacuum. Rather, we must look at the ordinary meaning in the context of the written description and the prosecution history.") (quoting Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313, 1319 (Fed. Cir. 2005)).
If analysis of the available intrinsic evidence resolves a perceived ambiguity in a disputed claim term, then the inquiry is ended. Vitronics, 90 F.3d at 1583. Where, on the other hand, there remains uncertainty regarding a claim after consideration of all intrinsic evidence, the court may then turn to examination of such available extrinsic sources as expert testimony, inventor testimony, dictionaries, and technical treatises and articles, for guidance in reconciling any conflicting intrinsic indicators. Id. at 1584. It should be noted, however, that extrinsic evidence may only be used to aid the court in understanding patent claims and cannot be relied upon to justify any departure from or contradiction of the actual claim language employed by the applicant. Id. To assist in resolving an ambiguity, in its discretion, a court may admit and rely on prior art, whether or not it is cited in the specification or file history. Id. at 1584-85. Prior art and dictionaries, as publicly accessible objective information, are for obvious reasons preferable to expert testimony as tools for resolving ambiguity. Id. at 1585; see also Texas Digital Sys., 308 F.3d at 1202-03.
Ultimately, interpretation of the terms of a patent claim can only be determined with a full understanding of what the inventor actually invented and intended to encompass within the scope of his or her patent claims. Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). For this reason, when inventors distinguish their invention from prior art, that prior art is properly excluded from coverage of the patent's claims. Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc., 267 F. Supp. 2d ...