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

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE PARKER-HANNIFIN CORPORATION, Plaintiff, v. SEIREN CO., LTD., Defendant. ) ) ) ) ) ) ) ) )

C.A. No. 07-104 (MPT)

DEFENDANT SEIREN CO., LTD.'S ANSWERING BRIEF ON CLAIM CONSTRUCTION MORRIS, NICHOLS, ARSHT & TUNNELL LLP Jack B. Blumenfeld (#1014) Julia Heaney (#3052) 1201 North Market Street P.O. Box 1347 Wilmington, DE 19899-1347 (302) 658-9200 [email protected] Attorneys for Defendant Seiren Co., Ltd.

OF COUNSEL: Scott M. Daniels Ken-Ichi Hattori Michael J. Caridi WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP 1250 Connecticut Avenue, N.W. Suite 700 Washington, DC 20036 (202) 822-1100 July 15, 2008

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TABLE OF CONTENTS Page TABLE OF AUTHORITIES .......................................................................................................... ii I. ARGUMENT...................................................................................................................... 1 A. Construction of the Claims ......................................................................................1 1. 2. 3. 4. 5. 6. "...not V-0 rated...".....................................................................................1 "...exterior surface..." "...interior surface..." ............................................2 "...thickness dimension..." .........................................................................2 "...coating at least a portion of the interior surface..." ...............................3 "...rating of V-0..." .....................................................................................4 "...penetrating into said fabric member to a depth which is less than the thickness dimension of said fabric member such that the exterior surface of said fabric member remains electrically-conductive ..." ............................................................5

B.

Parker's Construction of the Flame Retardant Content Limitations Highlights the Indefiniteness of those Limitations ..................................................6 1. 2. "...by weight..." ..........................................................................................6 "...by dry weight..."....................................................................................7

II.

CONCLUSION................................................................................................................... 8

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TABLE OF AUTHORITIES

CASES

PAGE(S)

Gillette Co. v. Energizer Holdings, Inc., 405 F.2d 1367 (Fed. Cir. 2005)..............................................................................................4, 5 Glaverbel S.A. v. Northlake Mkt'g & Supp., Inc., 45 F.3d 1550, 33 USPQ2d 1496 (Fed. Cir. 1995) .....................................................................3 Honeywell Int'l, Inc. v. Int'l Trade Comm'n, 341 F.3d 1332 (Fed. Cir. 2003)..................................................................................................8 Middleton, Inc. v. Minnesota Minging & Manufacturing Co. 311 F.3d 1384, 65 USPQ2d 1138 (Fed. Cir. 2002) ...................................................................3 Ormco Corp. v. Align Tech., Inc, 498 F.3d 1307 (Fed. Cir. 2007)..................................................................................................4 Tip Sys., LLC v Phillips & Brooks/Gladwin, Inc., 2008 U.S. App. LEXIS 12757 (Fed. Cir. June 18, 2008) ..........................................................3

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I.

ARGUMENT A. Construction of the Claims 1. "...not V-0 rated..."

The limitation in claim 1 of the `348 patent of a "resilient core member which is not V-0 rated," means that the "core member" has not received a V-0 rating under Underwriter's Laboratories UL Standard No. 94. (Seiren Opening Br. at 11). Parker's argument that this limitation means that a core member "would not be accorded a V-O standard rating under UL Standard No. 94 were the core member to be submitted for UL testing" adds a limitation where none exists. The term "which is not V-O rated" does not refer to hypothetical VO testing, as Parker suggests, and nothing in the claim language, specification or `348 prosecution supports Parker's construction. Lacking support in the intrinsic record, Parker relies on Declarations of `348 inventor William Flanders and litigation counsel Stephen Nash, to assert that it was known "at the time the application leading to the `348 patent was filed, that a foam core member could have been submitted to UL for testing under UL Standard No. 94." (Parker Opening Br. at 11). The declarations, however, do not support Parker's construction. Mr. Nash's declaration is

unsupported attorney argument and should be give non weight. Further, by asserting that testing was actually done by UL for those in the industry, the declarations contradict Parker's position that the claim term "which is not V-0 rated" is merely hypothetical. Parker's declarations actually confirm Seiren's proposed construction of the limitation -- that UL testing of the foam core was actually done and that a V-0 rating was actually obtained. Parker further argues that there would be no practical reason for one skilled in the art to submit core foam to UL for testing, since such testing would provide no benefit to the gasket-maker. (Parker Opening Br. at 12). There is no requirement in the law that the plain -1-

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meaning of a claim limitation be contradicted or ignored for the reason that one skilled in the art might not perform the recited test for whatever business reasons. Parker's argument touts extrinsic evidence at the expense of the plain language of the claim limitation itself, which requires "a resilient core member which is not V-0 rated..." Parker's only reference to the intrinsic evidence is its argument that the `348 "specification does not cite a single example of a foam core being submitted to UL for testing." (Parker Opening Br. at 12). This omission from the specification ­ which contains only a single example -- does not support Parker's claim construction. If construction of a claim limitation were to turn on whether a corresponding example were present in the specification, many of the limitations in the `348 claims would be gone. 2. "...exterior surface..." "...interior surface..."

Parker defines the claim terms "exterior surface" and "interior surface" merely by repeating the very words of the limitation. Parker never addresses the key issue of whether the word "surface" means a direction, or a plane on which the flame retardant layer is directly applied. (See Seiren Opening Brief at 11). Therefore, Seiren's construction of "exterior surface" as the outer face, outside or exterior boundary of the fabric member, and "interior surface" as the inner face, inside or interior boundary of the fabric member" should be adopted. 3. "...thickness dimension..."

The Bunyan specification explicitly defines "thickness dimension" as being represented by "t1" in Fig. 2. (Opening Br. Exhibit A, 6:38-44). Parker's argument that the drawing in Fig. 2 is merely "a specific example" that should not be used to construe the claim limitation is incorrect (Parker Opening Br. at 15), because the claim language "thickness dimension" is ambiguous and must be interpreted in light of the specification.

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Parker's assertion that the claims contain an "explicit and clear definition" (Parker Opening Brief at 15) is simply wrong. The location of the surface of a loosely woven fabric cannot be accurately defined by the thickness of the fibers. Rather, as discussed in the Bunyan specification, because of the undulating structure of the exterior surface of the fabric, measurement of the thickness may vary depending on the location of measurement. The Bunyan specification provides a general illustration of the method for measuring "thickness dimension," in an example of the claimed gasket. (6:38-44). Therefore, Seiren's construction of "thickness dimension" does not import limitations from the specification into the claims, as Parker contends, but merely construes the claim term in light of the specification where necessary to resolve ambiguity. See Glaverbel S.A. v. Northlake Mkt'g & Supp., Inc., 45 F.3d 1550, 33 USPQ2d 1496 (Fed. Cir. 1995) (claims to be construed in the context of the specification). The case on which Parker relies, Tip Sys., LLC v Phillips & Brooks/Gladwin, Inc., 2008 U.S. App. LEXIS 12757, at *24 (Fed. Cir. June 18, 2008), is inapposite. In Tip, the Federal Circuit referred to both the text and the drawings of the specification to construe the claims. 4. "...coating at least a portion of the interior surface..."

Seiren's construction relies upon the plain meaning of the claim words "coating at least a portion of the interior surface" of the fabric member. (Seiren Opening Br. at 13). The plain meaning requires that the flame retardant layer is directly applied to the interior surface of the fabric member, covering at least a portion of that interior surface. Without support from the specification or dictionaries, Parker focuses on the claim word "coating" to assert that the limitation includes the possibility of "a second or subsequent layer of material on any given article, regardless of how many layers have been previously coated thereon." (Parker Opening Br. at 16). Parker thus improperly ignores the word "surface" in the claim limitation. See Middleton, Inc. v. Minnesota Mining & -3-

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Manufacturing Co. 311 F.3d 1384, 1387 (Fed. Cir. 2002) (a claim term must be read in the context of the claim as a whole, not in isolation). Parker thus incorrectly ignores the fact that the Bunyan specification invariably discloses direct application of the flame retardant to the fabric member ­ there is never an intermediate layer (see Seiren Opening Br. at 13-14). See Ormco Corp. v. Align Tech., Inc, 498 F.3d 1307, 1316 (Fed. Cir. 2007) ("...to attribute to the claims a meaning broader than any indicated in the patents and their prosecution history would be to ignore the totality of the facts of the case and exalt slogans over real meaning"). To the extent that Parker refers to the Bunyan specification at all, it is to lift the word "side" and to substitute it in the claims for the word "surface." (Parker Opening Br. at 17). Such importation of limitations into a claim from the specification is of course improper. Gillette Co. v. Energizer Holdings, Inc., 405 F.2d 1367, 1375 (Fed. Cir. 2005). Had Parker wanted the claim limitation to include the word "side," it could have done so. Instead it used the word "surface," which connotes direct application of the flame retardant to the fabric. Indeed, the claims of the original Bunyan patent, U.S. Patent No. 6,248,393, recite application of the flame retardant to the "second side of said fabric member." (Exh. A hereto; emphasis added). 5. "...rating of V-0..."

The claim limitation that the flame retardant is "effective to afford said gasket a V-0 rating" means that the gasket would receive a V-0 rating if it were tested according to Underwriter's Laboratories (UL) Standard No. 94, not that the gasket actually has a V-0 rating. In an about-face from its construction of the "not V-0 rated" limitation, Parker asserts that the "V-0 rating" limitation means that "the gasket must actually be tested in accordance with the Standard and accorded a V-0 rating. (Parker Opening Br. at 18; emphasis -4-

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added). Parker does not explain why "V-O rated" should be construed one way in one limitation and the opposite way in another. Instead, Parker attempts to support its position by arguing that the gasket in the example of the Bunyan specification was actually UL-rated. (Parker Opening Br. at 18). Parker's reliance on an example in the specification does not defeat Seiren's plain meaning construction, and Parker's attempt to import limitations from the specification into the claims should be rejected. Gillette Co., 405 F.3d at 1375. Parker also argues that one skilled in the art would "understand the importance of actual V-0 approval." (Parker Opening Br. at 19). Whether or not actual V-0 approval is commercially important has nothing to do with whether the Bunyan claims require V-O approval. Other gasket features, such as suitable size and weight, are also presumably

commercially important, but they are not required by the Bunyan claims either. Parker's construction should be rejected. As with Parker's reliance on an example from the specification, supra, its reliance on alleged commercial advantage of a V-O rating does not defeat Seiren's plain meaning construction. 6. "...penetrating into said fabric member to a depth which is less than the thickness dimension of said fabric member such that the exterior surface of said fabric member remains electrically-conductive ..."

The claim limitation that the penetration of the flame retardant into fabric be "such that" the exterior surface remains electrically conductive, means that the flame retardant layer does not penetrate the fabric member to an extent that would cause the exterior surface of the fabric member to have a surface resistivity greater than about 0.1 /sq. (See Seiren Opening Br. at 15-16). Parker's construction ignores the explicit definition of "electrically conductive" in the Bunyan specification (Opening Br. Exh. A, 5:48). Instead, Parker focuses on a general,

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vaguely stated "advantage" of the claimed invention ­ no "appreciable bleed through" of the flame retardant in the fabric so that electrical surface conductivity of the exterior remains uncompromised. (Id., 3:38-44). Parker switches the word "appreciably" from modifying the bleed through, to modifying the electrical conductivity. (Parker Opening Br. at 20 ­ "the electrical conductivity of the exterior surface is not appreciably affected"). Parker never explains why. There is simply no justification for adjusting the meaning of claim limitations by shifting the wording of the specification. B. Parker's Construction of the Flame Retardant Content Limitations Highlights the Indefiniteness of those Limitations 1. "...by weight..."

Parker asserts that Claim 8 of the `348 patent and claim 1 of the `536 patent, which recite that the flame retardant layer comprises an amount of flame retardant "by weight," but fails to state whether the content is wet weight or dry weight, is a process limitation. Specifically, Parker asserts that the flame retardant "when applied" contains the requisite weight percentages, but the weight percentage of the claimed end product gasket (i.e. the supposed "dry weight") does not necessarily contain these percentage amounts (Parker Opening Br. at 22-24). Parker does not cite anything in the claim language or prosecution history that supports its construction. Rather, Parker cites to a single specific example from the specifications that recites a formation process wherein an emulsion, not a gasket, has the claimed 30-50 wt. %. The plain language of both claims reads: `348 patent: ....gasket comprising...a flame retardant layer...said flame retardant layer comprising between about 30-50% by weight of one or more flame retardant additives...

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`536 patent: ....gasket comprising...a flame retardant layer...said flame retardant layer comprising at least about 30% by weight of one or more flame retardant additives... The claims clearly indicate that the weight percentage amounts of flame retardant are within the flame retardant layers, and the flame retardant layers are within a gasket. Parker argues, however, that "[t]he issue is whether the flame retardant has the recited FR additive content at the time it is applied, or after it is cured." (Parker Opening Br. at 22). Thus, Parker's claim construction position shows that the limitations are in fact related to the process of making the gasket and are not within the claimed gasket (a position which is not supported by the claim language or prosecution history), and therefore there is no definite construction of the term "by weight." 2. "...by dry weight..."

Claim 1 of the `095 patent recites that the flame retardant layer comprises an amount of flame retardant "by dry weight." Parker asserts that the meaning of the term "dry" is readily ascertainable to the skilled artisan by contrasting the claim language of Claim 1 of the `095 patent with the claim language of the `348 and `536 patents ("by weight") set forth above. (Parker Opening Br. at 24). Parker's arguments appear to relate to the construction of the `348 and `536 claim terms more than the later prosecuted `095. In fact, the inclusion of the limitation "dry" in the later prosecuted `095 patent claims only further emphasizes the indefiniteness of the term "by weight" in the earlier prosecuted `348 and `536 claims. Parker further asserts that the limitation "dry" means that the flame retardant layer "when dried or otherwise hardened contains at least about 50% of flame retardant additives." There is no support for reading this meaning of "dry" into the claim language other than to again turn to the example of an emulsion with a 30-50% within the specification. (Parker Opening Br. -7-

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at 24-25). As such, Parker's proposed construction does not remedy any of the defects noted in Seiren's Opening Brief. Namely, the intrinsic record fails to disclose how to perform a "dry weight" measurement on the claimed, finished gasket, other than by referring to the characteristics of a liquid emulsion during its application in gasket manufacture. Thus, the claim terms does not give objective notice to the public of what is covered by the claim. Honeywell Int'l, Inc. v. Int'l Trade Comm'n, 341 F.3d 1332, 1339 (Fed. Cir. 2003) (where alternative protocols are possible and there is no guidance in the intrinsic record as to which protocol to follow, the claim is invalid as indefinite). II. CONCLUSION For the foregoing reasons, the claim terms in dispute should be construed as proposed herein and in Seiren's Opening Brief. MORRIS, NICHOLS, ARSHT & TUNNELL LLP

/s/ Julia Heaney
Jack B. Blumenfeld (#1014) Julia Heaney (#3052) 1201 North Market Street P.O. Box 1347 Wilmington, DE 19899-1347 (302) 658-9200 [email protected] Attorneys for Defendant Seiren Co., Ltd.

OF COUNSEL: Scott M. Daniels Ken-Ichi Hattori Michael J. Caridi WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP 1250 Connecticut Avenue, N.W. Suite 700 Washington, DC 20036 (202) 822-1100 July 15, 2008
2410065

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CERTIFICATE OF SERVICE I hereby certify that on July 15, 2008 I electronically filed the foregoing with the Clerk of the Court using CM/ECF, which will send notification of such filing to: Rudolf E. Hutz, Esquire Francis DiGiovanni, Esquire CONNOLLY BOVE LODGE & HUTZ LLP I further certify that I caused to be served copies of the foregoing document on July 15, 2008 upon the following in the manner indicated: BY E-MAIL Rudolf E. Hutz, Esquire Francis DiGiovanni, Esquire Connolly Bove Lodge & Hutz LLP The Nemours Building 1007 N. Orange Street Wilmington, DE 19801

/s/ Julia Heaney
Julia Heaney (#3052)

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