Free Claim Construction Opening Brief - District Court of Delaware - Delaware

Case 1:07-cv-00226-JJF

Document 68

Filed 01/16/2008

Page 1 of 48

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE VOITH PAPER GMBH & CO. KG Plaintiff, v. JOHNSONFOILS, INC. Defendant. : : : : : : : : : Civil Action No. 07-226-JJF

DEFENDANT JOHNSONFOILS, INC.'S OPENING CLAIM CONSTRUCTION BRIEF George H. Seitz, III (DE #667) Patricia Pyles McGonigle (DE #3126) Kevin A. Guerke (DE#4096) Seitz, Van Ogtrop & Green, P.A. 222 Delaware Avenue, Suite 1500 P.O. Box 68 Wilmington, DE 19899 (302) 888-0600 -andAnthony S. Volpe John J. O'Malley Ryan W. O'Donnell Volpe and Koenig, P.C. United Plaza, Suite 1600 30 South 17th Street Philadelphia, PA 19103 (215) 568-6400

Attorneys for Defendant JohnsonFoils, Inc.

Case 1:07-cv-00226-JJF

Document 68

Filed 01/16/2008

Page 2 of 48

TABLE OF CONTENTS TABLE OF CONTENTS ................................................................................................ i TABLE OF AUTHORITIES ........................................................................................ iv NATURE AND STAGE OF THE PROCEEDINGS ..................................................... 1 SUMMARY OF ARGUMENT ...................................................................................... 3 STATEMENT OF FACTS ............................................................................................ 3 ARGUMENT ................................................................................................................. 5 I. II. INTRODUCTION .............................................................................................. 5 LEGAL STANDARDS ........................................................................................ 6 A. Claim construction. ................................................................................. 6 1. 2. 3. Identify the person of ordinary skill in the art. .......................... 7 The Court must consider the plain and ordinary meaning of the claims. .................................................................. 7 The Court must consider the patent's specification and prosecution history to determine if there is a contrary or special definition for a term. ..................................... 8 As a last resort, the Court may consider extrinsic evidence to interpret the terms. ................................... 9 Once all of the above steps are completed, the Court can construe the claims. ............................................................... 9

4. 5. B. C. III. IV.

The scope of a patent claim is subject to prosecution history estoppel or prosecution history disclaimer. ............................. 10 Legal standard for definiteness of patent claims. ................................ 13

DEFINING THE PERSON OF ORDINARY SKILL IN THE ART ............... 14 PROPER INTERPRETATION OF THE CLAIMS OF U.S. PATENT NO. 5,718,805 ........................................................................... 14

i

Case 1:07-cv-00226-JJF

Document 68

Filed 01/16/2008

Page 3 of 48

A.

Independent claim 1. ............................................................................. 14 1. 2. 3. The Term "Following." ................................................................ 16 The Phrase "neither wire belt defining a single wire predrainage zone" ....................................................................... 16 The Terms of the "First Section" ................................................ 17 (a) (b) The Phrase "a first drainage element at the start of the path through the twin wire zone[.]"....................... 17 The Phrase "means for supporting the belts for forming a wedge shaped entrance slot into the first section[.]" ..................................................... 19 The Phrase "a fiber suspension supplying headbox having an outlet placed and directed for delivering fiber suspension from the headbox to the wedge shaped entrance slot." ................. 19

(c)

4.

The Terms of the "Second Section" ........................................... 20 (a) First Drainage Strips and Second Drainage Strips .................................................... 22 (i) The Phrase "a plurality of first drainage strips are positioned for contacting the first wire belt" ............................................................. 22 (ii) The Phrase "a plurality of second drainage strips are positioned within the loop of the second wire belt and are for contacting the second wire belt"......................................................... 23 (b) First Support Means for Resiliently Supporting the First Drainage Strips and Second Support Means Supporting the Second Drainage Strips Rigidly .................................................... 24 (i) The Phrase "first support means for resiliently supporting the first drainage strips against

ii

Case 1:07-cv-00226-JJF

Document 68

Filed 01/16/2008

Page 4 of 48

the respective wire belt that the strips contact" ............................................................................. 24 (ii) The Phrase "second support means supporting the second drainage strips rigidly against the second wire belt"............................................ 25 (c) First and Second Means for Collecting Water................. 26 (i) The Phrase "first means for collecting the water drained from the fiber suspension by the most upstream, one of the drainage strips" ............................................................................... 26 (ii) The Phrase "second means separate from the first means for collecting thewater drained from the fiber suspension by all of the other drainage strips"................................................. 28 5. 6. 7. B. The Terms of the "Third Section" .............................................. 28 All Sections are Free of Rolls Which Deflect the Twin Wire Zone .................................................................... 29 Summary ..................................................................................... 30

Independent claim 2. ............................................................................. 31 1. 2. Free of Forming Rolls ................................................................. 31 No Suction Roll ........................................................................... 32

C. D. E. V.

Independent claim 3. ............................................................................. 33 Independent claim 4. ............................................................................. 33 Independent claim 5. ............................................................................. 33

PROPER INTERPRETATION OF THE CLAIMS OF U.S. PATENT NO. 5,972,168................................................................................... 34 A. Independent claim 3. ............................................................................. 35

iii

Case 1:07-cv-00226-JJF

Document 68

Filed 01/16/2008

Page 5 of 48

B. C. D.

Independent claim 7. ............................................................................. 37 Independent claims 1 and 5. ................................................................. 38 Dependent claims 2, 4, 6, and 8. ........................................................... 39

CONCLUSION ............................................................................................................ 39

iv

Case 1:07-cv-00226-JJF

Document 68

Filed 01/16/2008

Page 6 of 48

TABLE OF AUTHORITIES FEDERAL CASES Al-Site Corp. v. VSI Int'l, Inc., 174 F.3d 1308 (Fed. Cir. 1999) ..........................................8 Apex Inc. v. Raritan Computer, Inc., 325 F.3d 1364 (Fed. Cir. 2003) ................................8 Applied Med. Res. Corp. v. United States Surgical Corp., 448 F.3d 1324 (Fed. Cir. 2006) ................................................................................3, 7 Biovail Corp. Int'l v. Andrx Pharms., Inc., 239 F.3d 1297 (Fed. Cir. 2001) ...............................................................................................................10, 35 Brown v. 3M, 265 F.3d 1349 (Fed. Cir. 2001) ....................................................................7 CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308 (Fed. Cir. 2000) .....................................................................................7 CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359 (Fed. Cir. 2002)..............................8 Deering Precision Instruments, L.L.C. v. Vector Distrib. Sys., 347 F.3d 1314 (Fed. Cir. 2003) ...................................................................................10 Default Proof Credit Card Sys. v. Home Depot U.S.A., Inc., 412 F.3d 1291 (Fed. Cir. 2005) ...................................................................................13 In re Donaldson Co., 16 F.3d 1189 (Fed. Cir. 1994) ........................................................13 Eagle Comtronics, Inc. v. Arrow Commun. Labs., Inc., 305 F.3d 1303 (Fed Cir. 2002) ....................................................................................12 Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973 (Fed. Cir. 1999) ....................................12 Exxon Research & Eng'g Co. v. United States, 265 F.3d 1371 (Fed. Cir. 2001) ...........................................................................................................14 Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 304 F.3d 1289 (Fed. Cir. 2002) .....................................................................................................11, 12 Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 344 F.3d 1359 (Fed. Cir. 2003) ...........................................................................................................11 Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002) ..............................................................................................10, 11

v

Case 1:07-cv-00226-JJF

Document 68

Filed 01/16/2008

Page 7 of 48

Honeywell Int'l v. Hamilton Sundstrand Corp., 370 F.3d 1131 (Fed. Cir. 2004) .............12 Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352 (Fed. Cir. 2000) .......................8 Life Techs., Inc. v. Clontech Lab., Inc., 224 F.3d 1320 (Fed. Cir. 2000) ...........................7 Markman v. Westview Instruments, 517 U.S. 370 (1996) ..................................................6 Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) ..........................6, 9 Micro Chem., Inc. v. Great Plains Chem. Co., 194 F.3d 1250 (Fed. Cir. 1999) ................8 Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348 (Fed. Cir. 2003) .......................13 Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314 (Fed. Cir. 2003) ...............................12 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ............................................7, 8, 9 Quantum Corp. v. Rodime, PLC, 65 F.3d 1577 (Fed. Cir. 1995) .....................................14 Rhine v. Casio, Inc., 183 F.3d 1342 (Fed. Cir. 1999) .......................................................14 S3 Inc. v. nVIDIA Corp., 259 F.3d 1364 (Fed. Cir. 2001) ................................................13 Sage Prods. v. Devon Indus., 126 F.3d 1420 (Fed. Cir. 1997) ............................................8 Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570 (Fed. Cir. 1995) ......................12 Springs Window Fashions LP v. Novo Indus., L.P., 323 F.3d 989 (Fed. Cir. 2003) ...........................................................................................................13 Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448 (Fed. Cir. 1985) ...................7 Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996) ...............................9

FEDERAL STATUTES 35 U.S.C. §112 ........................................................................................................8, 13, 39 35 U.S.C. §120...................................................................................................................34

vi

Case 1:07-cv-00226-JJF

Document 68

Filed 01/16/2008

Page 8 of 48

OTHER

Merriam Webster's Collegiate Dictionary, 452 (10th Ed. 1995). ........................16

vii

Case 1:07-cv-00226-JJF

Document 68

Filed 01/16/2008

Page 9 of 48

NATURE AND STAGE OF THE PROCEEDINGS On April 27, 2007, Voith Paper GmbH & Co. KG ("Voith") filed this action alleging that JohnsonFoils, Inc. ("JohnsonFoils") infringed on Patent No. 5,718,805 ("the '805 Patent"), and Patent No. 5,972,168 ("the '168 Patent") (collectively referred to as "Patents-in-Suit"). JohnsonFoils served its Answer, Affirmative

Defenses and Counterclaims on August 13, 2007. On August 3, 2007, the Court issued a Scheduling Order setting the trial for November 5, 2008, and ordering the parties to: (1) (2) File all motions to amend the pleadings by December 21, 2007; File their respective Markman Briefs ten days prior to the scheduled Markman hearing; (3) (4) Attend a Markman hearing scheduled for January 30, 2008; Complete exchange of contentions interrogatories, identify witnesses and complete document discovery by February 15, 2008; and (5) and complete fact discovery by April 30, 2008. (D.I. 17).

On August 24, 2007, JohnsonFoils filed Requests for Reexamination with the United States Patent and Trademark Office for the Patents-in-Suit. On August 28, 2007, JohnsonFoils filed a "Motion to Stay the Proceedings Pending Reexamination of the Patents-in-Suit or in the Alternative for Leave to File a Motion for Summary Judgment Prior to August 20, 2008 that Patents 5,718,805 and 5,972,168 are Invalid." (D.I. 27). Voith filed its response on September 17, 2007. (D.I. 33). JohnsonFoils' motion to stay remains pending.

-1-

Case 1:07-cv-00226-JJF

Document 68

Filed 01/16/2008

Page 10 of 48

On September 5, 2007, Voith answered JohnsonFoils' Counterclaims. (D.I. 31). On November 9, 2007, Voith filed its "Motion to Compel Defendant JohnsonFoils, Inc., to Provide Information Requested in Voith's First and Second Sets of Interrogatories and To Produce Documents Responsive to Voith's First and Second Set of Requests for Documents." (D.I. 42). JohnsonFoils filed its "Answering Brief to Plaintiff's Motion to Compel Defendant JohnsonFoils, Inc. to Provide Information Requested in Voith's First and Second Sets of Interrogatories and to Produce Documents Responsive to Voith's First and Second Requests for Documents" on November 28, 2007. (D.I. 46). Voith then filed a further Reply Brief on December 3, 2007. (D.I. 48). Voith's motion to compel remains pending. On December 17, 2007, JohnsonFoils filed "Defendant's Motion to Compel Production of Documents in Response to Its First Set of Document Requests." (D.I. 49). On December 18, 2007, Voith filed its "Motion for a Protective Order Pursuant to Federal Rule of Civil Procedure 26(c) Prohibiting the Disclosure of Voith's Highly Confidential Information to Individuals Engaged in Competitive Business Practices for or on Behalf of Voith's Competitor JohnsonFoils, Inc." (D.I. 52). On December 21, 2007, JohnsonFoils filed its "Motion for Leave to Amend Its Counterclaims" (D.I. 54) and its "Opening Brief in Support of Its Motion for Leave to Amend Its Counterclaims." (D.I. 55).

-2-

Case 1:07-cv-00226-JJF

Document 68

Filed 01/16/2008

Page 11 of 48

On January 9, 2008, JohnsonFoils' filed its "Answering Brief in Opposition to Plaintiff's Motion for A Protective Order Pursuant to Federal Rules of Civil Procedure 26(c) Prohibiting the Disclosure of Voith's Highly Confidential Information to Individuals Engaged in Competitive Business Practices for or on Behalf of Voith's Competitor JohnsonFoils, Inc." (D.I. 57). On January 14, 2008, Voith filed its "Answering Brief in Opposition to Defendant JohnsonFoils, Inc.'s Motion for Leave to Amend its Counterclaims." (D.I. 62). On January 16, 2007, JohnsonFoils filed its "Declaration of Patricia P. McGonigle in Support of Defendant, JohnsonFoils, Inc.'s Opening Claim Construction Brief." (D.I. ). SUMMARY OF ARGUMENT Each apparatus claim in Patent Nos. 5,718,805 and 5,972,168 recites three structurally distinct sections with different components. Each method claim of Patent 5,972,168 is directed to producing paper web by feeding wire belts past those structurally distinct sections, which have distinct functions. Since different claim limitations separately reciting structurally and functionally distinct elements can not mean the same thing,
1

the first, second, and third sections of the Patents-in-

Suit must be construed as separate sections that do not overlap. STATEMENT OF FACTS The '805 Patent, Exhibit A, issued from a chain of continuing applications. The '805 Patent issued directly from Application No. 08/556,769 ("the '769
1

See, Applied Med. Res. Corp. v. United States Surgical Corp., 448 F.3d 1324, 1333 (Fed. Cir. 2006).

-3-

Case 1:07-cv-00226-JJF

Document 68

Filed 01/16/2008

Page 12 of 48

Application") which was filed November 2, 1995 as a continuation application of Application No. 08/286,948 ("the '948 Application"), filed August 8, 1994. Id. The '948 Application, which issued as Patent No. 5,500,091 ("the '091 Patent"), was a continuation of Application No. 08/055,918 ("the '918 Application"), filed April 29, 1993 and which ultimately issued as Patent No. 5,389,206 ("the '206 Patent"). Id. The '918 Application was a continuation of Application No. 07/773,965 ("the '965 Application") filed as PCT/EP90/01313 on September 8, 1990. Id. The '805 Patent also claims priority to DE 39 27 597.3, filed August 22, 1989. Exhibit A, Facepage. The '805 Patent includes independent apparatus claims 1 ­ 5 and no dependent claims. Exhibit A, Col. 8, line 4 ­ Col. 12, line 21. The '168 Patent also issued from a chain of continuing applications, as follows. The '168 Patent issued directly from Application 09/161,138 ("the '138

Application") which was filed on September 25, 1998 as a continuation of Application No. 09/023,435 ("the '435 Application"). Id. The '435 Application was filed on February 13, 1998 as a continuation of the '769 Application, i.e. the '805 Patent application. Id. Like the '769 Application, the `138 Application is also a continuation of the '948 Application, the '918 Application, the '965 Application, PCT/EP90/01313, and DE 39 27 597.3. Id. The '168 Patent includes independent apparatus claims 3 and 7; and independent method claims 1 and 5. Exhibit B, Col. 8, line 4 ­ Col. 12, line 2. The '168 Patent also includes dependent claims 2, 4, 6, and 8.

-4-

Case 1:07-cv-00226-JJF

Document 68

Filed 01/16/2008

Page 13 of 48

JohnsonFoils produced the official United States Patent and Trademark Office ("USPTO") file histories related to the Patents-in-Suit in discovery as JFI0204346 ­ JFI0204886. On even date with the filing of this brief, JohnsonFoils filed the "Declaration of Patricia P. McGonigle in Support of Defendant, JohnsonFoils, Inc.'s Opening Claim Construction Brief." ("Declaration"). The

Declaration included those file histories as its Exhibits 1 through 5. Exhibits F, G, H, and P herein are copies of selected documents of Exhibit 3 of the Declaration. Exhibits I, K, M, N, and O herein are copies of selected documents of Exhibit 1 of the Declaration. ARGUMENT I. INTRODUCTION Each of the Patents-in-Suit states: "The present invention relates to a twinwire former for the production of a fiber web, in particular a paper web, from fiber suspension." Exhibit A, Col. 1, lines 15 ­ 27; Exhibit B, Col. 1, lines 17 ­ 19. In other words, the Patents-in-Suit relate to a paper making machine and a method of making paper with that machine. The claimed machine and process of making paper involves draining water from a fiber suspension by running the fiber suspension serially past unique components of the paper machine. Exhibit A, Col. 1, lines 15 ­ 44; Exhibit B, Col. 1, lines 17 ­ 46. Each apparatus claim in the Patents-in-Suit recites that the machine has a twin wire zone separated into discrete "first", "second", and "third" sections and each section includes unique components. See Exhibit A, Col. 8, line 4 ­ Col. 12,

-5-

Case 1:07-cv-00226-JJF

Document 68

Filed 01/16/2008

Page 14 of 48

line 21; and Exhibit B, Col. 8, line 4 ­ Col. 12, line 2. Each method claim recites "feeding the wire belts" first past components that correspond to the first section, then past components that correspond to the second section, and finally past components that correspond to the third section. See Exhibit B, Col. 8, line 4 ­ Col. 12, line 2. The scope of each claim of the Patents-in-Suit is limited to either a machine with these three discrete sections or a method of making paper web with such a three section machine. Exhibit C includes a claim chart comparing the '805 Patent claim 1 to its claims 2 ­ 5. Exhibit D includes a claim chart comparing the '168 Patent

independent claims to one another and to the '805 Patent claim 1. II. LEGAL STANDARDS A. Claim construction.

Claim construction is a matter of law decided exclusively by the court and not the finder of fact. Markman v. Westview Instruments, 517 U.S. 370, 372 (1996) ("Markman II"). Construing the claims is a multi-step process of: 1) identifying the person of ordinary skill in the art; 2) looking at the plain and ordinary meaning of the claims; 3) looking to the patent's specification and prosecution history if there is a contrary or special definition for a term; 4) looking at extrinsic evidence to interpret the terms; and 5) construing the terms based on the previous steps. See

Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995)
("Markman I"), aff'd, 517 U.S. 370 (1996).

-6-

Case 1:07-cv-00226-JJF

Document 68

Filed 01/16/2008

Page 15 of 48

1.

Identify the person of ordinary skill in the art.

A person of ordinary skill in the art is one who thinks along the line of conventional wisdom in the art and is not one who undertakes to innovate, whether by patient, and often expensive, systematic research or by extraordinary insights.

Life Techs., Inc. v. Clontech Lab., Inc., 224 F.3d 1320, 1325 (Fed. Cir. 2000) (citing Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985)).
2. The Court must consider the plain and ordinary meaning of the claims.

For every disputed claim term, a choice must be made between its plain and ordinary meaning or a contrary, if any, special definition from the specification.

Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005). The analysis begins
with the claim terms themselves. "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." Id. at 1314 (citing Brown v. 3M, 265 F.3d 1349, 1352 (Fed. Cir. 2001)). "[T]he context in which a term is used in the asserted claims can be highly instructive." Id. In particular, the use of different terms in a claim connotes different meanings.

Applied, 448 F.3d at 1333 (Fed. Cir. 2006) (citing, CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000)).
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding

-7-

Case 1:07-cv-00226-JJF

Document 68

Filed 01/16/2008

Page 16 of 48

structure, material, or acts described in the specification. 35 U.S.C. § 112, Paragraph 6. "[W]hether a claim limitation is in means-plus-function format, is a matter of claim construction and is thus a question of law reviewed de novo." Apex

Inc. v. Raritan Computer, Inc., 325 F.3d 1364, 1373 (Fed. Cir. 2003) (citing Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352 (Fed. Cir. 2000)).
A claim limitation that uses the word "means" will invoke a rebuttable presumption that § 112, Paragraph 6 applies.

CCS Fitness, Inc. v. Brunswick

Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002). When a limitation lacks the term
"means" but uses functional terms rather than structure or material to describe the claimed function, the limitation is in means-plus-function format. Micro Chem.,

Inc. v. Great Plains Chem. Co., 194 F.3d 1250, 1257 (Fed. Cir. 1999) (citing Al-Site Corp. v. VSI Int'l, Inc., 174 F.3d 1308, 1318 (Fed. Cir. 1999)).
In construing means-plus-function limitations, a court must first define the particular function claimed. Sage Prods. v. Devon Indus., 126 F.3d 1420, 1428 (Fed. Cir. 1997). Then, the court must identify "the corresponding structure, material, or acts described in the specification" that performs the claimed function. 35 U.S.C. § 112, Paragraph 6; see Sage Prods., 126 F.3d at 1428. 3. The Court must consider the patent's specification and prosecution history to determine if there is a contrary or special definition for a term.

"The claims, of course, do not stand alone. Rather, they are part of a fully integrated written instrument ... . For that reason, claims `must be read in view of the specification, of which they are a part.'" Phillips, 415 F.3d at 1315. If the

-8-

Case 1:07-cv-00226-JJF

Document 68

Filed 01/16/2008

Page 17 of 48

specification reveals a special definition given to the claim term that differs from the ordinary meaning, then that term definition governs. Id. at 1316. Similarly, the prosecution history can be consulted to determine how the inventor understood the claim language and whether the inventor limited the invention during prosecution. Id. at 1317. In other words, the specification is the best source for interpreting a disputed claim, guided, as needed, by the prosecution history. Id. at 1315. Reliance on dictionaries or treatises to assist in interpreting the commonly understood meaning of the claim terms is to be limited, and the use of the term in the specification should be controlling. Id. at 1320-1324. 4. As a last resort, the Court may consider extrinsic evidence to interpret the terms.

As a last resort, extrinsic evidence, such as the prior art and expert testimony, may also be relied on to construe patent claims, but only after all of the intrinsic evidence is considered. Markman I, 52 F.3d at 980. Extrinsic evidence that contradicts the plain meaning of the claim terms should be rejected. Vitronics

Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996).
5. Once all of the above steps are completed, the Court can construe the claims.

Having: 1) identified the person of ordinary skill in the art; 2) looked at the plain and ordinary meaning of the claims; 3) looked to the patent's specification and prosecution history to determine if there is a contrary or special definition for a term; and 4) considered whether extrinsic evidence is appropriate to interpret the terms, a court can construe the claims. Phillips, 415 F.3d at 1313-1314.

-9-

Case 1:07-cv-00226-JJF

Document 68

Filed 01/16/2008

Page 18 of 48

B.

The scope of a patent claim is subject to prosecution history estoppel or prosecution history disclaimer. Prosecution history estoppel prevents the

Prosecution History Estoppel:

patentee from broadening the scope of the claim through the doctrine of equivalents.

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 734 (2002)
(Festo VIII). By surrendering a broader claim, the applicant acknowledges the

meaning of the words to describing the broader and narrower invention and affirmatively chooses the narrower meaning.

Id. at 734-735. An applicant who

narrowed the claims to obtain a patent cannot recapture the broader claim scope by arguing a lack of a broader word needed to describe the equivalent. Id. "There are two distinct theories of prosecution history estoppel--amendmentbased estoppel and argument-based estoppel."

Deering Precision Instruments,
"In

L.L.C. v. Vector Distrib. Sys., 347 F.3d 1314, 1324-1325 (Fed. Cir. 2003).

general, prosecution history estoppel, under either theory, requires that patent claims be interpreted in light of the proceedings before the PTO." Deering, 347 F.3d at 1325. When multiple patents derive from the same initial application, the

prosecution history regarding a claim limitation in any patent that has issued applies with equal force to subsequently issued patents that contain the same claim limitation. Biovail Corp. Int'l v. Andrx Pharms., Inc., 239 F.3d 1297, 1301 (Fed. Cir. 2001). With respect to amendment-based estoppel, a rebuttable presumption exists that a narrowing amendment related to patentability results in a surrender of a patent claim's scope. Festo VIII, 535 U.S. at 737. The Federal Circuit, on remand

- 10 -

Case 1:07-cv-00226-JJF

Document 68

Filed 01/16/2008

Page 19 of 48

from the Supreme Court, established three-steps for determining prosecution history estoppel. First, determine if the claim amendment narrowed the literal scope of the claim; second, determine if the narrowing amendment was made for a reason related to patentability; third, if the first and second steps are answered affirmatively, decide the extent of the scope surrendered by the amendment. Festo

Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 344 F.3d 1359, 1366 - 1367 (Fed.
Cir. 2003) ("Festo IX"). In Festo VIII, the Supreme Court imposed a presumption that a narrowing amendment relating to patentability surrendered all of the territory between the original and the amended claim limitation. Id. (citing Festo

VIII, 535 U.S. at 740).

If an alleged equivalent falls within this surrendered

territory, there is a presumption of prosecution history estoppel that precludes infringement under the doctrine of equivalents. Festo IX, 344 F.3d at 1367. The patentee bears the burden to show that any narrowing amendment did not surrender the equivalent at issue. Id. (citing Festo VIII, 535 U.S. at 741). The patentee can only meet this burden by showing: (1) that the equivalent was "unforeseeable" at the time of the amendment; (2) the rationale underlying the amendment bears no more than a tangential relation to the equivalent in question; or (3) some other reason suggesting that the patentee could not reasonably be expected to have described the substitute in question. Festo VIII, 535 U.S. at 74041; Festo IX, 344 F.3d. at 1365. In short, the patentee must show that at the time of the amendment one skilled in the art could not reasonably have been expected to draft a claim that literally encompassed the alleged equivalent.

Festo Corp. v.

- 11 -

Case 1:07-cv-00226-JJF

Document 68

Filed 01/16/2008

Page 20 of 48

Shoketsu Kinzoku Kogyo Kabushiki Co., 304 F.3d 1289, 1290 (Fed. Cir. 2002).
The practice of rewriting a dependent claim into independent form is a narrowing amendment, and that amendment bars the application of the Doctrine of Equivalents for the subject matter added from the dependent claim to the original subject matter of the independent claim. Honeywell Int'l v. Hamilton Sundstrand

Corp., 370 F.3d 1131, 1141 (Fed. Cir. 2004).
With respect to argument-based estoppel, the scope of claim coverage is limited by arguments seeking to overcome or distinguish a reference.

Eagle

Comtronics, Inc. v. Arrow Commun. Labs., Inc., 305 F.3d 1303, 1316 (Fed. Cir.
2002) (citing Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 979 (Fed. Cir. 1999) (holding that the scope of coverage of the claims may change if a patentee has "relinquished [a] potential claim construction in an amendment to the claim or in an argument to overcome or distinguish a reference")). Also, "[c]lear assertions made during prosecution in support of patentability, whether or not actually required to

secure allowance of the claim, may also create an estoppel." Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1583 (Fed. Cir. 1995), emphasis added. Any
argument-based estoppel affecting a limitation in one claim extends to all claims in which that limitation appears. Id. at 1584. Prosecution History Disclaimer: Prosecution history disclaimer narrows the meaning of a term from the plain and ordinary meaning to a limited meaning based on arguments made during the claim's prosecution. Omega Eng'g, Inc. v. Raytek

Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003).

The rationale that supports the

- 12 -

Case 1:07-cv-00226-JJF

Document 68

Filed 01/16/2008

Page 21 of 48

doctrine is simple: competitors should be able to rely on statements made during a patent's prosecution; that is, a patentee who disclaims subject matter during prosecution cannot later recapture the subject matter in litigation. Springs Window

Fashions LP v. Novo Indus., L.P., 323 F.3d 989, 995 (Fed. Cir. 2003).
C. Legal standard for definiteness of patent claims.

The patent statute requires that the claims of a patent "particularly [point] out and distinctly [claim] the subject matter which the applicant regards as his invention." 35 U.S.C. § 112, Paragraph 2. This definiteness requirement "focuses on whether the claims, as interpreted in view of the written description, adequately perform their function of notifying the public of the [scope of the] patentee's right to exclude." S3 Inc. v. nVIDIA Corp., 259 F.3d 1364, 1371- 72 (Fed. Cir. 2001). "If one employs means-plus-function language in a claim, one must set forth in the specification an adequate disclosure showing what is meant by that language. If an applicant fails to set forth an adequate disclosure, the applicant has in effect failed to particularly point out and distinctly claim the invention as required by the second paragraph of section 112." Default Proof Credit Card Sys. v. Home Depot

U.S.A., Inc., 412 F.3d 1291, 1298 (Fed. Cir. 2005), (quoting In re Donaldson Co., 16
F.3d 1189, 1195 (Fed. Cir. 1994) (en banc)). Determining whether a patent claim satisfies the definiteness requirement of 35 U.S.C. § 112, Paragraph 2 is a matter of law for the court. See Novo Indus., L.P.

v. Micro Molds Corp., 350 F.3d 1348, 1353 (Fed. Cir. 2003). If a court determines
that a claim is not "amenable to construction," then the claim is invalid as

- 13 -

Case 1:07-cv-00226-JJF

Document 68

Filed 01/16/2008

Page 22 of 48

indefinite. Exxon Research & Eng'g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). An indefinite claim cannot be "fixed" during litigation by a court

rewriting them in a way that corrects ambiguous or indefinite language. Rhine v.

Casio, Inc., 183 F.3d 1342, 1345 (Fed. Cir. 1999); Quantum Corp. v. Rodime, PLC,
65 F.3d 1577, 1584 (Fed. Cir. 1995) ("Although we construe claims, if possible, so as to sustain their validity, it is well settled that ... courts do not redraft claims.") III. DEFINING THE PERSON OF ORDINARY SKILL IN THE ART The Patents-in-Suit state that the alleged inventions are merely

combinations of known features. Exhibit A, Col. 3, lines 1 ­ 2; and Exhibit B, Col. 3, lines 4 ­ 5. One of ordinary skill in the art is a person having familiarity with these known, or conventional, paper making features. This person would have sufficient experience of about 2 years to appreciate both known machine features and paper making. Expert opinion is not necessary to explain the claimed subject matter. A person of ordinary skill in this art need not have any specific scientific degree, technical training, or mathematical knowledge. The person of ordinary skill in the art need only comprehend the conventional features in the recited combination. It is from this perspective that the following claim terms are construed. IV. PROPER INTERPRETATION OF THE CLAIMS OF U.S. PATENT NO. 5,718,805 A. Independent claim 1.

Independent claim 1 of the '805 Patent is reproduced below.

- 14 -

Case 1:07-cv-00226-JJF

Document 68

Filed 01/16/2008

Page 23 of 48

1. A twin-wire former for the production of a paper web from a fiber suspension, the twin wire former comprising: first and second web forming wire belts, means for directing the wire belts to travel along a path together for forming a twin wire zone of the twin wire former, with the web between the wire belts as the wire belts travel along the path through the twin wire zone, neither wire belt defining a single wire predrainage zone; each wire belt forming an endless loop; the twin wire zone having a first section which includes a first drainage element at the start of the path through the twin wire zone, means for supporting the belts for forming a wedge shaped entrance slot into the first section, a fiber suspension supplying headbox having an outlet placed and directed for delivering fiber suspension from the headbox to the wedge shaped entrance slot of the first section of the twin wire zone; the twin wire zone having a second section following the first section along the path of the belts through the twin wire zone in the second section, a plurality of first drainage strips are positioned for contacting the first wire belt; in the second section, a plurality of second drainage strips are positioned within the loop of the second wire belt and are for contacting the second wire belt; the first strips being shifted in position along the path of the wire belts with respect to the second strips so that the first and second strips are offset and in a non-opposing relationship; first support means for resiliently supporting the first drainage strips against the respective wire belt that the strips contact; second support means supporting the second drainage strips rigidly against the second wire belt; first means for collecting the water drained from the fiber suspension by the most upstream, one of the drainage strips; second means separate from the first means for collecting the water drained from the fiber suspension by all of the other drainage strips; and the twin wire zone having a third section following the second section along the path of the wire belts through the twin wire zone; a second

- 15 -

Case 1:07-cv-00226-JJF

Document 68

Filed 01/16/2008

Page 24 of 48

drainage element in the third section for being engaged by one of the wire belts as the wire belts travel over the second drainage element, the twin wire zone being free of rolls which deflect the twin wire zone. Exhibit A, Col. 8, lines 4 ­ 49, underlining emphasis added. 1. The Term "Following"

The second section follows the first section, and the third section follows the second section along the path of the wire belts through the twin wire zone. The accepted meaning of follows is "to go or come after a person or thing in place, time, or sequence.2" Sections that go or come in a sequence necessarily occupy discrete physical places. Under the plain and ordinary meaning of claim 1, the first, second, and third sections are discrete physical sections that do not overlap. ordinary skill in the art would interpret one section "following" another as "coming after [the previous section] in sequence and occupying a discrete physical place." 2. The Phrase "neither wire belt defining a single wire predrainage zone" One of

In the '805 Patent application (i.e., the '769 Application), Exhibit F, Voith attempted to obtain claims to a twin wire zone that included at least some a single wire predrainage zone. The claims included the addition of "neither wire belt

defin[es] a single wire predrainage zone of a substantial length." Exhibit F, page 14, underlining and bold emphasis added. Voith could not obtain broader claims because every element of the claims was old and disclosed in prior art references. Exhibit G, pages 2-5. Voith's March 4, 1997 Reply amended the claims to recite
Exhibit E, Merriam Webster's Collegiate Dictionary, 452 (10th Ed. 1995).

2

- 16 -

Case 1:07-cv-00226-JJF

Document 68

Filed 01/16/2008

Page 25 of 48

"neither wire belt defining a single wire predrainage zone." Exhibit H, pages 1 - 9, underlining added. Voith surrendered all twin wire formers having any single wire predrainage zone and it cannot recapture the prior art technology through equivalents. "[N]either wire belt defining a single wire predrainage zone" is limited to the literal meaning: "neither wire belt has any single wire predrainage." 3. The Terms of the "First Section"

The components of the first section are: (a) "a first drainage element at the start of the path through the twin wire zone," (b) "means for supporting the belts for forming a wedge shaped entrance slot into the first section," and (c) "a fiber suspension supplying headbox having an outlet placed and directed for delivering fiber suspension from the headbox to the wedge shaped entrance slot[.]" Exhibit C, pages 3 - 4; and Exhibit A, Col. 8, lines 14 ­ 21. (a) The Phrase "a first drainage element at the start of the path through the twin wire zone" The '805 Patent specification gives the "first drainage element" special meaning as the particular drainage devices: a rotating forming cylinder, a curved stationary forming shoe, or drainage strips. Exhibit A, Col. 3, lines 7 ­ 10; and Col. 6, lines 50 ­ 62. And "as a rule" the rotating forming cylinder is a suction roll. Exhibit A, Col. 6, lines 19 ­ 23. Based on the special meaning in the specification, the first drainage element of the '805 Patent can be a suction roll or a curved stationary forming shoe. See

- 17 -

Case 1:07-cv-00226-JJF

Document 68

Filed 01/16/2008

Page 26 of 48

The '805 Patent states the further limitation that the first drainage element may be a straight forming shoe but only in undefined "certain situations." Exhibit A, Col. 4, lines 14-16. Since the public cannot determine what would qualify as a "certain situation," the first drainage element cannot be a straight forming shoe. The '805 Patent also provides a special meaning for the term "drainage" in the first section: For success it is, however, also decisive that previously, in section I, a known pre-drainage towards both sides has already taken place and that this also takes place with the greatest possible retention of the flocculation-free condition of the fiber suspension. Exhibit A, Col. 5, lines 26 ­ 30, underlining emphasis added. The drainage element in the first section must cause drainage toward both sides. But the '805 Patent never defines "a known pre-drainage." Additionally, Voith distinguished its claims over the prior art Patent No. 4,925,531 ("Koski," Exhibit J) by stating that Koski's deflectors in the first section are not drainage elements: Koski, on the other hand, teaches several deflectors 24 at a location similar to the one where the curved drainage element in the first section of claim 13 appears. Such deflectors are not drainage elements. Exhibit I, Page 5, underlining emphasis added. Contrary to Voith's assertion, Koski states: "there is one or several deflectors 24 which remove water out of the web W that is being formed." Exhibit J, Col. 4, lines 24 ­ 29. Voith unambiguously argued that Koski's drainage deflectors are not the claimed drainage element of the '805 Patent. Since the claim 1 "drainage strips" recited in the second section are

deflectors, Voith has disclaimed drainage strips in the first section of the claimed twin wire former. Exhibit A, Col. 5, lines 21 ­ 24.

- 18 -

Case 1:07-cv-00226-JJF

Document 68

Filed 01/16/2008

Page 27 of 48

One of ordinary skill in the art would interpret "a first drainage element at the start of the path through the twin wire zone" as limited to "either a suction roll or a curved stationary forming shoe within the twin wire zone that results in drainage from both sides of the twin wire zone." (b) The Phrase "means for supporting the belts for forming a wedge shaped entrance slot into the first section" The function of this means for element is "supporting the belts for forming a wedge shaped entrance slot into the first section." The '805 Patent describes two different structures for performing this function: 1) breast rolls 13 and 14, and 2) suction roll 40 in combination with breast roll 13. Exhibit A, Figures 1 ­ 5; Col. 4, lines 12 ­ 13; and Col. 6, lines 20 ­ 24. One of ordinary skill in the art would interpret "means for supporting the belts for forming a wedge shaped entrance slot into the first section" as "two breast rolls or a breast roll and a suction roll that support the belts to form a wedge shaped entrance slot into the first section." (c) The Phrase "a fiber suspension supplying headbox having an outlet placed and directed for delivering fiber suspension from the headbox to the wedge shaped entrance slot" One of ordinary skill in the art understands the meaning of "fiber suspension supplying headbox." However, the claim limitation "placed and directed for

delivering fiber suspension from the headbox to the wedge shaped entrance slot" has a special meaning in the '805 Patent: The jet pulp discharged by the headbox 10 comes into contact with the two wire belts 11 and 12 only at the place where the lower wire 11 in the first section I of the twin-wire zone travels over a stationary curved forming shoe 16.

- 19 -

Case 1:07-cv-00226-JJF

Document 68

Filed 01/16/2008

Page 28 of 48

Exhibit A, Col. 4, lines 6 ­ 10, underlining added. Each figure of the '805 Patent illustrates the only to the place where the wire travels over the first drainage element. Exhibit A, Drawing Sheets. One of ordinary skill in the art in view of the above and the lack of a single wire zone would interpret "a fiber suspension supplying headbox having an outlet placed and directed for delivering fiber suspension from the headbox to the wedge shaped entrance slot" as

directed for delivering fiber suspension only at the place where the lower wire in the first section of the twin wire zone travels over the stationary curved forming shoe or suction roll and forms a wedge shaped entrance."
4. The Terms of the "Second Section"

"a fiber suspension supplying headbox having an outlet placed and

As recited in claim 1 of the '805 Patent, the components of the second section are: (a) first drainage strips and second drainage strips; (b) first support means for resiliently supporting the first drainage strips and second support means supporting the second drainage strips rigidly; and (c) first and second means for collecting water. In particular, claim 1 recites: in the second section, a plurality of first drainage strips are positioned for contacting the first wire belt; ... a plurality of second drainage strips are positioned within the loop of the second wire belt and are for contacting the second wire belt; ... first support means for resiliently supporting the first drainage strips against the respective wire belt that the strips contact; second support means supporting the second drainage strips rigidly against the second wire belt;

- 20 -

Case 1:07-cv-00226-JJF

Document 68

Filed 01/16/2008

Page 29 of 48

first means for collecting the water drained from the fiber suspension by the most upstream, one of the drainage strips; [and] second means separate from the first means for collecting the water drained from the fiber suspension by all of the other drainage strips... . Exhibit A, Col. 8, lines 22 ­ 42. The '805 Patent separates these components from the first section: The inventors have found that a combination of known features, namely: A. Twin-wire former without a single-wire pre-drainage zone or at least without a single-wire pre-drainage zone of any substantial length such as to cause any appreciable pre-drainage B. Start of the drainage in the twin-wire zone at a preferably curved drainage element, for instance on a rotating forming cylinder or, even better, on a curved stationary forming shoe C. Further drainage in the twin-wire zone between strips which are arranged along a "zig-zag" line, the strips which rest against the one wire belt being resiliently supported, leads to an extremely high increase in the quality of the finished fiber web, so that it satisfies even the highest requirements. ... Exhibit A, Col. 3, lines 1 ­ 17, underlining added. The '805 Patent also states that the "extremely high increase in the quality of the finished fiber web" and the alleged invention cannot be achieved unless the second section components are physically isolated both from the first and third sections: It is important that two drainage boxes 17 and 18 with the alternately resiliently and firmly supported ledge strips 27 and 28 lie not in the front or the rear sections but in the middle section II of the twin-wire zone, since only here can they develop their full effect, namely, intensive drainage of the fiber suspension fed while retaining the fine flocculation-free fiber distribution. This is achieved in the manner that the corresponding wire belt is imparted a slight (scarcely visible)

- 21 -

Case 1:07-cv-00226-JJF

Document 68

Filed 01/16/2008

Page 30 of 48

deflection on each strip so that turbulence is constantly produced in the still liquid part of the fiber pulp. For success it is, however, also decisive that previously, in section I, a known pre-drainage towards both sides has already taken place and that this also takes place with the greatest possible retention of the flocculation-free condition of the fiber suspension. Exhibit A, Col. 5, lines 15-30, underlining and bold emphasis added. In other

words, the drainage strips and their associated structures cannot be located in any other section. Based on the plain language of claim 1 and the '805 Patent's explicit requirements, one of ordinary skill in the art would interpret "the twin wire zone having a second section following the first section along the path of the belts through the twin wire zone" as

section in sequence and occupying a discrete physical place along the path of the belts through the twin wire zone, wherein the components of the second section are not located in any other section."
(a) First Drainage Strips and Second Drainage Strips (i) The Phrase "a plurality of first drainage strips are positioned for contacting the first wire belt" The '805 Patent describes the stationary curved forming shoe in the first section as including "several strips 16' with drainage slits present between them." Exhibit A, Col. 4, lines 6 ­ 12. However, the '805 Patent goes further to state that these forming shoe strips are not drainage strips in the second section. Exhibit A, Col. 5, lines 15 ­ 30. Claim 1 also distinguishes the plurality of first drainage strips and the plurality of second drainage strips; the plurality of first drainage strips are resiliently supported while the plurality of second drainage strips are rigidly supported. Exhibit A, Col. 8, lines 32 ­ 36. The '805 Patent further notes, "Instead

"the twin wire zone having a second section coming after the first

- 22 -

Case 1:07-cv-00226-JJF

Document 68

Filed 01/16/2008

Page 31 of 48

of a rigidly supported [second] strip, a feed or discharge edge of a drainage box can also be provided." Exhibit A, Col. 7, lines 65 ­ 67. Since these structures are specific for the rigidly supported strips, a resiliently supported first strip cannot be a feed or discharge edge of a drainage box. One of ordinary skill in the art would interpret "a plurality of first drainage strips are positioned for contacting the first wire belt;" as "a plurality of first drainage strips that are not forming shoe strips, are not feed or discharge edges of drainage boxes, and are positioned for contacting the first wire belt." (ii)The Phrase "a plurality of second drainage strips are positioned within the loop of the second wire belt and are for contacting the second wire belt" As set forth immediately above, the Patents-in-Suit state that drainage strips are not forming shoe strips. One of ordinary skill in the art would interpret "a plurality of second drainage strips are positioned within the loop of the second wire belt and are for contacting the second wire belt" as

"a plurality of second drainage strips that are not forming shoe strips positioned within the loop of the second wire belt for contacting the second wire belt."
Claim 1 also recites the specific orientation of the first and second drainage strips: the first strips being shifted in position along the path of the wire belts with respect to the second strips so that the first and second strips are offset and in a non-opposing relationship[.] Exhibit A, Col. 8, lines 29 ­ 32. As stated in the '805 Patent Summary of the Invention, the alleged invention must have "strips which are arranged along a "zig-

- 23 -

Case 1:07-cv-00226-JJF

Document 68

Filed 01/16/2008

Page 32 of 48

zag" line... ." Exhibit A, Col. 3, lines 11 ­ 14. The '805 Patent defines "zig-zag": It is important that each of the strips 27 and 28 lies in the region of a space between two opposite strips so that a "zig-zag" arrangement (i.e. non-opposing relationship) is present. Exhibit A, Drawing Sheet 1 and Col. 4, lines 59 ­ 62. Based on the requirement for zig-zag strips and the clear definition of the same, one of ordinary skill in the art would interpret "the first strips being shifted in position along the path of the wire belts with respect to the second strips so that the first and second strips are offset and in a non-opposing relationship" to mean "each of the first strips and the second strips lies in the region that is spaced between two of the opposite strips." Voith stated that the prior art Patent 4,769,111, Exhibit L, shows "flexibly supported battens in a twin wire former. The battens, however, are not displaced as set forth in applicants' invention." Exhibit K, pages 1 and 3. Based on the recited requirement for the zig-zag arrangement and Voith's distinction of the same over the prior art, Voith is limited to a literal claim meaning and cannot recapture equivalents of the recited strip arrangement. (b) First Support Means for Resiliently Supporting the First Drainage Strips and Second Support Means Supporting the Second Drainage Strips Rigidly (i) The Phrase "first support means for resiliently supporting the first drainage strips against the respective wire belt that the strips contact" The structures for "resiliently supporting the first drainage strips against the respective wire belt that the strips contact" are springs, pneumatic pressure cushions, or a water permeable plate. Exhibit A, Col. 4, lines 25 ­ 26. One of

- 24 -

Case 1:07-cv-00226-JJF

Document 68

Filed 01/16/2008

Page 33 of 48

ordinary skill in the art would interpret "first support means for resiliently supporting the first drainage strips against the respective wire belt that the strips contact" as

"springs, pneumatic pressure cushions, or a water permeable plate that are associated with the first drainage strips and resiliently support them against the respective wire belt."
(ii) The Phrase "second support means supporting the second drainage strips rigidly against the second wire belt" The '965 Application, from which the '805 Patent is a continuation, included claims that only recited a single "means for resiliently supporting at least one of the first and second drainage strips against the respective wire belt that the strip contacts... ." Exhibit M, page 3. The USPTO rejected that broad recital because Voith only described how to make and use a machine with "flexibly supported strips located opposite rigidly supported strips... ." Exhibit N, page 2, underlining emphasis added. The USPTO also rejected the claims as known in the prior art German reference DE 3 183 133 ("DE 133"); or the "Tissari" or "Koski" Patents in view of DE 133. Exhibit N, pages 3 ­ 5. In particular, the Examiner stated: Tissari ... shows every feature claimed ... except it does not specify that at least one of the strips ... are "resiliently supported". Likewise Koski's sole Figure shows every feature of [the claims] except at least one or more of [the] deflectors ... being "resiliently mounted". However the artisan is well aware of the option and advantages of resiliently supported dewatering ribs/strips as evidenced by DE 3138133. Exhibit N, pages 4 ­ 5, underlining added. Voith amended the claims by adding the following underlined text and deleting bracketed text: first support means for resiliently supporting [at least one of] the first

- 25 -

Case 1:07-cv-00226-JJF

Document 68

Filed 01/16/2008

Page 34 of 48

[and second] drainage strips against the respective wire belt that that strip contacts; second support means suporting the at least one second drainage strip rigidly against the second wire belt. Exhibit O, page 2, underlining and bracketing in original. Voith also stated: Neither Tissari nor Koski disclose or suggest that the dewatering ribs/strips employed therein should have one set which is resiliently mounted and the other set rigidly mounted. In view of the foregoing, applicants respectfully submit that claim 13 is patentable over Tissari, Koski and DE `133, either considered singly or in combination.

Id., page 5.
The second means must be associated only with the second drainage strips. But, the Patents-in-Suit do not disclose structures for "supporting the second drainage strips rigidly against the second wire belt" and the limitation renders the claim insolubly ambiguous and indefinite. One of ordinary skill in the art would interpret "second support means supporting the second drainage strips rigidly against the second wire belt" as

"an indefinite structure for supporting the second drainage strips rigidly against the second wire belt."
(c) First and Second Means for Collecting Water (i) The Phrase "first means for collecting the water drained from the fiber suspension by the most upstream, one of the drainage strips" The first means is recited in lines 32 ­ 33 of the '769 Application claim 1, as filed; the second means is recited in lines 35 ­ 37. Exhibit F, pages 14 ­ 15. The USPTO rejected the '769 Application claims reciting these limitations and stated:

- 26 -

Case 1:07-cv-00226-JJF

Document 68

Filed 01/16/2008

Page 35 of 48

[I]t is unclear which strips first and second means for collecting water is meant for, all of the first and second drainage strips are implied in the current language, yet that is not clear nor supported by the specification. It appears that --second-- should be inserted before "drainage" on line 33 and line 36 of claim 1 to be clear and consistent with the specification. Exhibit G, page 2; the underlining was handwritten by the Examiner in the original. In reply, Voith stated: With respect to the rejection under 35 U.S.C. §112 concerning lines 33 and 36 of claim 1, applicants respectfully submit that the present language is clear. Since it does not matter whether the most upstream one of the drainage strips is a first drainage strip or a second drainage strip, the interpretation given to the language by the Examiner is correct and is the intended meaning. Exhibit H, page 9, underlining added. Based on Voith's unambiguous affirmation of the Examiner's interpretation, the function of the first means must be interpreted as "collecting water drained from the fiber suspension by the most upstream one of the drainage strips, whether that strip is a first or second strip." In the closest embodiment disclosed in the '805 Patent: a vacuum chamber 21 in a drainage box 18 collects water drained solely from the most upstream strip through a vertical channel 21a; the vacuum chamber 22 in the drainage box 18 collects water drained only from the other strips on the same side of the wire belts as the most upstream strip; and, drainage box 17 collects water only from the strips on the other side of the wire belts. Exhibit A, Col. 4, lines 17 ­ 47. One of ordinary skill in the art would interpret "first means for collecting the water drained from the fiber suspension by the most upstream, one of the drainage strips" as

the most upstream one of the drainage strips through a vertical

"a vacuum chamber, in a drainage box, that collects water drained by

- 27 -

Case 1:07-cv-00226-JJF

Document 68

Filed 01/16/2008

Page 36 of 48

channel."

(ii) The Phrase "second means separate from the first means for collecting the water drained from the fiber suspension by all of the other drainage strips"

As stated in section (i) immediately above, Voith defined this means-plusfunction limitation as collecting the water drained from the fiber suspension by all of the remaining first and second strips. However, the '805 Patent does not disclose any such structure for performing this function. See Exhibit A, Drawing Sheets. Since the Patents-in-Suit fail to describe the structures associated with this meansplus-function element, claim 1 is insolubly ambiguous and indefinite. One of

ordinary skill in the art would interpret "second means separate from the first means for collecting the water drained from the fiber suspension by all of the other drainage strips" as

"an indefinite structure, separate from the vacuum chamber, the drainage box and the vertical channel, for collecting the water drained from the fiber suspension by all of the remaining first and second strips."
5. The Terms of the "Third Section"

As recited in claim 1, the third section does not start within the second section but, instead, it follows "the second section along the path of the wire belts through the twin wire zone." Exhibit A, Col. 8, lines 22 ­ 24. The specification also establishes the critical requirement that the components of the second section do not extend into the third section: It is important that two drainage boxes 17 and 18 with the alternately resiliently and firmly supported ledge strips 27 and 28 lie not in the front or the rear sections but in the middle section II of the twin-wire zone, since only here can they develop their full effect.

- 28 -

Case 1:07-cv-00226-JJF

Document 68

Filed 01/16/2008

Page 37 of 48

Exhibit A, Col. 5, lines 15 ­ 19, underlining emphasis added. One of ordinary skill in the art would interpret "the twin wire zone having a third section following the second section along the path of the wire belts through the twin wire zone" as "a third section coming after the second section in sequence and occupying a discrete physical place along the path of the wire belts, wherein no component of the third section is located in any other section." The only recited component of the third section is "a second drainage element in the third section for being engaged by one of the wire belts as the wire belts travel over the second drainage element[.]" The second drainage element is given a special meaning in the specification as a curved forming shoe. Exhibit A, Col. 5, line 4. One of ordinary skill in the art would interpret this limitation as "a curved forming shoe positioned in the third section so one of the wire belts travels over the curved forming shoe." 6. All Sections are Free of Rolls Which Deflect the Twin Wire Zone

Claim 1 recites "the twin wire zone being free of rolls which deflect the twin wire zone." As filed, the '769 Application claim 1 did not recite this limitation. Exhibit F, pages 14 -15. The USPTO rejected claim 1 and its dependent claims 2 ­ 4 as anticipated or obvious over a variety of prior art references. Exhibit G, pages 3 ­ 6. However, the examiner indicated the allowability of dependent claim 5 if

presented as an independent claim. Claim 5 originally recited: "The twin wire former of claim 1, wherein the twin wire zone is free of rolls which deflect the twin wire zone." Exhibit F, page 15. In Reply, Voith re-wrote claim 5 to include the limitations of claim 1; Exhibit H, pages 1 ­ 2; and the USPTO issued a Notice of

- 29 -

Case 1:07-cv-00226-JJF

Document 68

Filed 01/16/2008

Page 38 of 48

Allowability, Exhibit P. Voith is restricted to the literal meaning of this limitation by its amendment and cannot recapture its equivalents. One of ordinary skill in the art would interpret this limitation as "the entire twin wire zone must be free of any deflection rolls." 7. Summary

Based on the foregoing, claim 1 must be construed as A twin-wire former for the production of a paper web from a fiber suspension, the twin wire former comprising: first and second web forming wire belts, means for directing the wire belts to travel along a path together for forming a twin wire zone of the twin wire former, with the web between the wire belts as the wire belts travel along the path through the twin wire zone, neither wire belt has any a single wire predrainage; each wire belt forming an endless loop; the twin wire zone having a first section which includes either a suction roll or a curved stationary forming shoe within the twin wire zone that results in drainage from both sides of the twin wire zone; two breast rolls or a breast roll and a suction roll that support the belts to form a wedge shaped entrance slot into the first section; a fiber suspension supplying headbox having an outlet placed and directed for delivering fiber suspension only at the place where the lower wire in the first section of the twin wire zone travels over the stationary curved forming shoe or suction roll and forms a wedge shaped entrance; the twin wire zone having a second section coming after the first section in sequence and occupying a discrete physical place along the path of the belts through the twin wire zone, wherein th