Free Claim Construction Opening 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 OPENING 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 1, 2008

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TABLE OF CONTENTS Page TABLE OF AUTHORITIES ......................................................................................................... iii I. II. INTRODUCTION .............................................................................................................. 1 THE LAW OF CLAIM CONSTRUCTION....................................................................... 1 A. B. The Goal of Claim Construction is to Determine the Claims' Meaning to a Person of Ordinary Skill in the Art. ........................................................................ 1 Sources of Evidence for Claim Construction.......................................................... 2 1. 2. 3. 4. III. The Language of the Claims is the Starting Point for Claim Construction................................................................................................ 2 Claims Must be Read in Light of the Specification, but the Specification does not Establish the Boundaries of the Claim ................... 3 The Claims are also Read in Light of the Prosecution History................... 4 Extrinsic Evidence can be Used to Assist the Court................................... 4

THE PROPER CONSTRUCTION OF THE PATENT CLAIMS ..................................... 5 A. B. The Level of Ordinary Skill in the Art.................................................................... 5 The Bunyan Patents ................................................................................................ 5 1. 2. 3. C. The Claims .................................................................................................. 5 The Bunyan Specification........................................................................... 6 The Bunyan Prosecution History ................................................................ 9

Construction of the Bunyan Claims...................................................................... 11 a. b. c. d. e. "...not V-0 rated..."..................................................................... 11 "...exterior surface...", "...interior surface..." ........................... 11 "...thickness dimension..." ......................................................... 12 "...coating at least a portion of the interior surface..." ................ 13 "...rating of V-0..." ...................................................................... 14 i

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f.

"...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 ..." ........................................................... 15 the remaining claims ..................................................................... 17

g. D. V.

The Flame Retardant Content Limitations Are Indefinite .................................... 22

CONCLUSION................................................................................................................. 23

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TABLE OF AUTHORITIES Page(s) CASES Abtox, Inc. v. Exitron Corp., 122 F.3d 1019 (Fed. Cir. 1997)..................................................................................................1 Comark Communications, Inc. v. Harris Corp., 156 F.3d 1182 (Fed. Cir. 1998).............................................................................................. 2-3 Electro Med. Sys. S.A. v. Cooper Life Sci. Inc., 34 F.3d 1048 (Fed. Cir. 1994)....................................................................................................3 Generation II Orthotics Inc. v. Med. Tech., Inc., 263 F.3d 1356 (Fed. Cir. 2001)................................................................................................13 Golight v. Wal-Mart, 355 F.3d 1327 (Fed. Cir. 2004)..................................................................................................4 Halliburton Energy Svcs. v. M-I LLC, 514 F.3d 1244 (Fed. Cir. 2008)................................................................................................22 Hauser, Inc. v. Hawk Measurement Sys. Pty. Ltd., 122 F.3d 1040 (Fed. Cir. 1997)..................................................................................................2 Honeywell Int'l, Inc. v. Int'l Trade Comm'n, 341 F.3d 1332 (Fed. Cir. 2003)................................................................................................22 In re GPAC Inc., 57 F.3d 1573 (Fed. Cir. 1995)....................................................................................................2 Innova/Pure Water, Inc. v. Safari Water Filtration Sys.,Inc., 381 F.3d 1111 (Fed. Cir. 2004)................................................................................................14 L.B. Plastics v. Amerimax Home Prods., 499 F.3d 1303 (Fed. Cir. 2007)............................................................................................2, 12 Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996)...................................................................................................................1 Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed.Cir.1995) (en banc).................................................................................... 3-5 Phillips v. AWN Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) ............................................................................. 1-4 Power Mosfet Techs. v. Siemens AG, 378 F.3d 1396 (Fed. Cir. 2004)................................................................................................14 iii

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SRI Intl v. Matsushita Elec. Corp. of America, 775 F.2d 1107 (Fed. Cir. 1985)..................................................................................................3 STATUTES 35 U. S. C. § 112................................................................................................................2, 3, 9, 22

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I.

INTRODUCTION There are three patents remaining in this case: U.S. Patent Nos. 6,521,348,

6,716,536 and 6,777,095 (Exhibits A, B & C, collectively the Bunyan Patents). The three patents are based on a series of continuation applications from a common parent and are each directed to flame retardant EMI shielding gaskets. Plaintiff Parker-Hannifin Corp. (ParkerHannifin) initially asserted two other patents, U.S. Patent Nos. 6,248,393 and 6,387,523, in the original Complaint but has since withdrawn them. Defendant Seiren Co., Ltd. (Seiren) hereby submits its opening brief addressing the proper construction of the '348, '536 and '095 patents. II. THE LAW OF CLAIM CONSTRUCTION It is a "bedrock principle" of patent law that "the claims of a patent define the invention to which the patentee is entitled the right to exclude." Phillips v. AWN Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). The interpretation of patent claims is generally a matter of law, decided by the Court. Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). Claim construction is "the process of giving proper meaning to the claim language." Abtox, Inc. v. Exitron Corp., 122 F.3d 1019, 1023 (Fed. Cir. 1997). A. The Goal of Claim Construction is to Determine the Claims' Meaning to a Person of Ordinary Skill in the Art. A patent provides notice to the public of the patentee's exclusive rights, and the patent's claims define the scope of those rights. In Phillips, the Federal Circuit restated the basic principles of claim construction and reiterated that the goal is to determine the meaning of the claims to a person of ordinary skill in the art at the time the application for the patent was filed. Phillips, 415 F.3d at 1313 ("The descriptions in patents are not addressed to the public generally, to lawyers or to judges, but . . . to those skilled in the art to which the invention pertains or with

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which it is most nearly connected.") (quoting In re Nelson, 280 F.2d 172, 181 (CCPA 1960)). The person of ordinary skill in the art is a theoretical construct who is presumed to be aware of all pertinent prior art and who possesses all the skills, experience and education commensurate with the sophistication of the particular technology. Endress + Hauser, Inc. v. Hawk Measurement Sys. Pty. Ltd., 122 F.3d 1040, 1042 (Fed. Cir. 1997) (citations omitted); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). B. Sources of Evidence for Claim Construction The four principle sources of evidence which may be used in construing claims are: (1) the language of the claims; (2) the specification; (3) the patent application's history of proceedings before the PTO; and (4) limited extrinsic evidence, such as dictionaries as objective sources of the common and ordinary meaning. L.B. Plastics v. Amerimax Home Prods., 499 F.3d 1303, 1308 (Fed. Cir. 2007). 1. The Language of the Claims is the Starting Point for Claim Construction

The patent claims define the scope of the patentee's exclusive rights. Phillips, 415 F.3d at 1312 (citation omitted). The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. 35 U.S.C. § 112, ¶ 2. The proper starting point, therefore, is always the language of the asserted claim itself. Comark Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998). Unless ambiguous or otherwise clearly modified by other intrinsic evidence, claim terms are given the ordinary and customary meaning that they would have to a person of ordinary skill in the relevant art at the time the patent application was filed. Phillips, 415 F.3d at 1312-1313

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("The inquiry into how a person of ordinary skill in the art understands a claim term provides an objective baseline from which to begin claim interpretation.") (citation omitted). Additionally, there is a presumption that each claim in a patent has a different scope. Comark Comm., 156 F.3d at 1187. This difference is presumed to be significant when the absence of such difference in meaning and scope would render one of the claims superfluous. Id. (citation omitted). 2. Claims Must be Read in Light of the Specification, but the Specification does not Establish the Boundaries of the Claim

The first paragraph of 35 U. S. C. § 112, states that the specification must contain a written description in sufficient detail as to enable one skilled in the art to practice the claimed invention. Thus, the claims are read in view of the specification. However, because the

specification is also meant to teach how to practice the invention, including the single best mode of using the invention, the specification can not be used as a source of claim limitations that do not appear in the claims themselves. Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed.Cir.1995) (en banc) ("The written description part of the specification itself does not delimit the right to exclude. That is the function and purpose of claims."); SRI Intl v. Matsushita Elec. Corp. of America, 775 F.2d 1107, 1121, n. 14 (Fed. Cir. 1985) ("Specifications teach. Claims claim."). Claims are not restricted to the specific embodiments or examples that appear in the specification. Phillips, 415 F.3d at 1323. Similarly, figures or drawings in a patent which depict an embodiment of the invention do not limit the claims to that particular figure. Electro Med. Sys. S.A. v. Cooper Life Sci. Inc., 34 F.3d 1048, 1054 (Fed. Cir. 1994) ("[P]articular embodiments appearing in a specification will not be read into the claims when the claim language is broader than such embodiments,"); Playtex Prod., Inc, v. Proctor & Gamble Co.,

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400 F.3d 901, 908 (Fed. Cir. 2005) ("Claims of a patent may only be limited to a preferred embodiment by the express declaration of the patentee.") (citation omitted). 3. The Claims are also Read in Light of the Prosecution History

Another important source of intrinsic evidence in claim construction is the patent's prosecution history, which should be consulted as needed to determine the scope of a patent claim. Phillips, 415 F.3d at 1317 ("Like the specification, the prosecution history provides evidence of how the PTO and the inventor understood the patent."). However, claim scope is restricted only when the patentee uses "words or expressions of manifest exclusion or restriction" during prosecution or in the specification, which represent "a clear disavowal of claim scope." Golight v. Wal-Mart, 355 F.3d 1327, 1331 (Fed. Cir. 2004). Ultimately, the interpretation to be given a term can only be determined and confirmed with a full understanding of what the inventors actually invented and intended to envelop with the claim. The construction that stays true to the claim language and most naturally aligns with the patent's description of the invention will be, in the end, the correct construction. Phillips, 415 F.3d at 1316. 4. Extrinsic Evidence can be Used to Assist the Court

Extrinsic evidence is any evidence not part of the claims, specification or prosecution history of the patent at issue. Extrinsic evidence can be used to provide background and assist the Court in understanding the technology at issue, such as how the invention works, or whether a particular claim term has a specialized meaning to one having ordinary skill in the art. Phillips, 415 F.3d at 1318. Because patent claims are to be construed as they would be understood by one having ordinary skill in the art at the time the invention was made, extrinsic evidence may be taken to "demonstrate the state of the prior art at the time of the invention." Markman, 52 F.3d at 980, 981. However, where a Court accepts extrinsic evidence, it is

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important that it be used to assist with the Court's understanding and not to vary or contradict the terms of the claims. Markman, 52 F.3d at 981. III. THE PROPER CONSTRUCTION OF THE PATENT CLAIMS A. The Level of Ordinary Skill in the Art As stated above, claim terms are generally given the meaning that they would have to a person of ordinary skill in the pertinent art at the time of the invention. As explained in the Bunyan patents, the pertinent field of the invention is "an electrically-conductive fabric having a layer of a flame retardant coating applied to one surface thereof for use as a sheathing within an EMI shielding gasket." (Exhibit A, 1:19-22).1 A person of ordinary skill in the art at the time of the invention of the Bunyan patents would be familiar with the design and properties of flame retardant EMI shielding gaskets, and would have either (1) six years or more of work experience in the design and/or manufacture of flame retardant EMI shielding gaskets, or (2) three years or more of work experience in the design and/or manufacture of flame retardant EMI shielding gaskets, along with a bachelor's degree in chemistry or a related field. B. The Bunyan Patents 1. The Claims

Claim 1 of the '348 patent is representative of the claims of the '348, '536 and '095 patents and recites: A flame retardant, electromagnetic interference (EMI) shielding gasket comprising: a resilient core member which is not V-0 rated under Underwriter's Laboratories (UL) Standard No. 94 extending
1

For the sake of clarity, the column/line numbers from the '348 patent are used herein to refer to the disclosure of each of the three patents.

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lengthwise along a central longitudinal axis and having an outer surface extending circumferentially about said longitudinal axis, said core member being formed of a foamed elastomeric material; an electrically-conductive fabric member surrounding the outer surface of said core member, said fabric member having an interior surface disposed facing the outer surface of said core member and an oppositely-facing, exterior surface, at least the exterior surface being electrically-conductive and the exterior surface defining with the interior surface a thickness dimension of the fabric member therebetween; and a flame retardant layer coating at least a portion of the interior surface of said fabric member, said flame retardant layer being effective to afford said gasket a flame class rating of V-0 under Underwriter's Laboratories (UL) Standard No. 94 and 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. (Emphasis added). Claim 8 of the '348 patent and the claims in dispute in the '536 and '095 patents contain the same terms emphasized above. Claim 8 of the '348 patent, claim 1 of the '536 patent, and claim 1 of the '095 patent each recites a flame retardant content. Seiren submits that these limitations cannot be construed and addresses them at the end of this Brief. 2. The Bunyan Specification

The Abstract of the Bunyan specification indicates that the disclosure relates to a "flame retardant, electrically-conductive EMI shielding material and method, the material being particularly adapted for use in fabric-over-foam EMI shielding gasket constructions." The Bunyan specification begins by identifying interference with the operation of electronic equipment from electromagnetic radiation within the electronic circuitry of the

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equipment (1:17-21). This interference, the Bunyan specification states, has been dealt with by shielding the equipment with a radiation barrier housing. Since access to the equipment is necessary, there must be gaps in the housing, such gaps reducing the shielding efficiency of the housing and sometimes even being a "secondary" source of radiation (1:39-47). Gaskets and other seals have been proposed both for filling gaps within mating surfaces of housings and other EMI shielding structures for maintaining electrical continuity across the structure, and for excluding from the interior of the device such contaminates as moisture and dust (1:54-58). These seals provide electrical surface conductivity even while under compression, but also have a resiliency allowing the seals to conform to the size of the gap; the seals additionally must be wear resistant, economical to manufacture, capable of withstanding repeated compression and relaxation cycles (1:63-2:3); and they often possess a low impedance, low profile gasket structure which is deflectable under normal closure force loads (2:8-10). The gaskets must also be flame retardant, i.e., achieve a rating of V-0 under UL Std. No. 94, "Tests for Flammability of Plastic Materials for Parts in Devices and Appliances" (1991), without compromising the electrical conductivity necessary for meeting EMI shielding requirements (2:49-54). The Bunyan specification then describes a specific gasket which consists of an electrically-conductive jacket or sheathing which is "cigarette" wrapped lengthwise over a polyurethane or other foam core (the polyurethane foams generally are produced by the reaction of polyisocyanate and a hydroxyl-functional polyol in the presence of a blowing agent); the blowing agent effects the expansion of the polymer structure into a multiplicity of open or closed cells (2:21-28). The foamed polymeric materials are flammable due to their cellular structure, high organic content and surface area (2:58-61).

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A proposed solution to this problem of flammability with foam gaskets is to sheath the foam within an electrically-conductive Ni/Cu-plated fabric to which a thermoplastic sheet is hot nipped or otherwise fusion bonded to the underside thereof (2:64-2:3). Another proposed solution is to apply a supplemental layer or coating to the interior surface of the sheath. The coating may be a flame-retardant urethane formulation which also promotes the adhesion of the sheath to the foam, and may additionally function to reduce bleeding of the foam through the fabric which otherwise could compromise the electrical conductivity of the sheath (3:9-16). In the broad statement of the invention, the Bunyan specification states that the flame retardant layer may be wet coated on the fabric without appreciable bleed through a relatively thin (i.e., 2-4 mil) coating layer provided on one fabric side without compromising the electrical surface conductivity of the other side (3:32-37). In use the fabric may be wrapped around the foam as a jacket, the coated side of the fabric being the interior surface adjacent the foam, and the uncoated side being the electrically-conductive exterior surface. The coating on the interior surface of the jacket blocks the pores of the fabric to retain the foam therein without penetrating or bleeding through to the exterior surface (3:60-66). The Bunyan specification includes a single example, from which it draws the conclusion that "[u]nexpectedly, it was found that a relatively porous or permeable fabric may be wet coated on one side with a relatively thin, i.e., 2-4 mil (0.05-0.10 mm), coating layer of a flame retardant composition without compromising the electrical surface conductivity of the other side." (10:24-28).

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3.

The Bunyan Prosecution History

The application which resulted in the '348 patent contained seven original claims. In an office action dated August 9, 2002, the examiner rejected the pending claims under 35 U.S.C. § 112, ¶1, because the claims were broader in scope then the enablement of the specification. The examiner asserted that the specification was enabling for gaskets in

which "the flame retardant coating does not penetrate to the full depth of the fabric member, so as to retain the electrical conductivity of the side not penetrated by flame retardant composition" but that the disclosure did not, however, enable one in the art to make any EMI shielding construction.2 Additionally, the Examiner rejected the pending claims for obviousness-type double patenting over claim 1-8 of U.S. Patent No. 6,387,523. The examiner stated: the conflicting claims are not identical, they are not patentably distinct from each other because claims 1-7 do not claim the depth of the fabric that is penetrated, as does [USP] 6,387,523. However, the specification of the instant application very clearly specifies that the fabric member has delimited the penetration by the flame retardant composition. Applicants responded to the rejection by limiting claim 1 to the scope of enablement found by the examiner in the specification. Specifically, claim 1 was amended to recite (1) that the resilient core member "is not V-0 rated under Underwriter's Laboratories (UL) Standard No. 94," (2) that "at least the exterior surface [is] electrically-conductive and the exterior surface [defines] with the interior surface a thickness dimension of the fabric member therebetween," and (3) that the flame retardant layer penetrates "into said fabric member to a depth which is less than the thickness dimension of said fabric member such that the exterior

2

The examiner also made a minor comment regarding claim 3.

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surface of said fabric member remains electrically-conductive." Applicants also added claims 818 as they appear in the '348 patent. In their accompanying remarks, applicants implied that the amendment of claim 1 was in response to the enablement rejection. With respect to the double patenting rejection, applicants filed a terminal disclaimer. Applicants also referred to the recitation in new claim 8 of the flame retardant layer comprising between about 30-50% by weight of one or more flame retardant additives: it is believed that the adhesive or other layers previously used in the art were not so highly loaded with flame retardant additives such that a gasket constructed therewith could achieve a UL rating of V0 notwithstanding that the other component part thereof, namely the core, were not in and of themselves V0 rated. Rather, it is believed that conventional wisdom called for each of the components of the gasket to be V0-rated for achieving an overall gasket construction having a V0 rating. It remained for the instant Applicants, however, to recognize that a V0-rated gasket could be constructed without the core itself having to be V0-rated. The examiner then allowed the application without a statement of reasons, and the '348 patent issued on February 18, 2003. The prosecution history of the applications which resulted in the '536 and '095 patents raised similar enablement and double patenting issues. The applicants addressed them in similar fashion by amending the independent claims to recite (1) that "at least the exterior surface [is] electrically-conductive and the exterior surface [defines] with the interior surface a thickness dimension of the fabric member therebetween," and (2) that the flame retardant layer (a) has the flame retardant contents recited in those patents and (b) penetrates "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."

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C.

Construction of the Bunyan Claims a. "...not V-0 rated..."

Claim 1 of the '348 patent clearly and unequivocally recites "a resilient core member which is not V-0 rated under Underwriter's Laboratories (UL) Standard No. 94." The direct, unqualified wording of the claim itself controls. It means simply that the "core member" has not received a V-0 rating under Underwriter's Laboratories UL Standard No. 94. The Bunyan specification refers to "core member 52" (Exhibit A, 7:57-8:12), but never suggests the core member is merely capable of affording a V-0 rating as proposed by Parker-Hannifin (i.e., that the core member would not be V-0 rated if it were tested according to UL Standard No. 94). Similarly, nothing in the '348 prosecution suggests such a meaning. If the '348 applicants had wanted to focus on the capability or effect of the core member, rather than its actual rating, they could have done so as they did with the flame retardant layer which is recited as "being effective to afford said gasket a flame class rating of V-0." b. "...exterior surface...", "...interior surface..."

Claim 1 refers to "the exterior surface being electrically-conductive and the exterior surface defining with the interior surface a thickness dimension of the fabric member therebetween." The "exterior surface" refers to the outer face, outside or exterior boundary of the fabric member, and the "interior surface" refers to the inner face, inside or interior boundary of the fabric member. This understanding of "surface" is supported by the Bunyan specification which invariably discloses the flame retardant composition coated on the "exterior boundary" of the conductive fabric. (See Exhibit A, Fig. 6; 1:20-22 ("a flame retardant coating applied to one surface thereof"); 3:16-17 ("coating applied to the interior surface of the sheath); 7:34-35 ("Core

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member 52 has an outer circumferential surface, 54"); 8:50-51 ("exposed on the exterior surface of the gasket"); 9:65-67 ("the emulsion was delivered to the surface of the cloth")). This construction of claim 1 is confirmed by dictionaries. The word "surface" is defined to mean "outside of a thing... any of the limits of a solid" (see Exhibit D, The Oxford Desk Dictionary, 579 (1995)). The word "exterior" is defined to mean "of or on the outside surface" (see Exhibit D, The Oxford Desk Dictionary, 200 (1995)). See L.B. Plastics v.

Amerimax Home Prods., 499 F.3d 1303, 1308 (Fed. Cir. 2007) (confirming the use of general purpose dictionaries). Parker-Hannifin defines these claims terms by merely repeating the words "interior," "exterior" and "surface." c. "...thickness dimension..."

Claim 1 recites that the exterior surface and the interior surface of the fabric member define the "thickness dimension" of the fabric member. Parker-Hannifin again defines the claim words by the words themselves, without any reference to the Bunyan specification, as the "distance between the exterior surface ...and the interior surface...." In fact, the Bunyan specification graphically shows the "thickness dimension" in Fig. 2 to be the distance represented by "t1."

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The accompanying text of the Bunyan specification explains that "the viscosity and hydrodynamic pressure of the resin composition are controlled in accordance with the precepts of the present invention to delimit the penetration of the resin layer to a depth, referenced at "d" in FIG. 2, which is less than the thickness dimension t1 of the fabric member 12. (Exhibit A, 6:38-44; emphasis). The Bunyan specification could not be clearer. Moreover, Parker-Hannifin's construction of the expression does not take into account the undulating nature of the warp and weft threads. That undulation results in variation of exterior surface/interior surface thicknesses, depending upon the location at which measurement is taken. Such variation depending upon the point of measurement would render the claims indefinite. Claim 1 should therefore be construed according to the Bunyan specification, not to Parker-Hannifin's variable standard that would make it indefinite. Generation II Orthotics Inc. v. Med. Tech., Inc., 263 F.3d 1356 (Fed. Cir. 2001) (claims should be construed, if possible, to support their validity). d. "...coating at least a portion of the interior surface..."

The claim recitation "coating at least a portion of the interior surface" means that flame retardant layer is applied directly to the interior surface of the fabric member, covering at least a portion of that interior surface. Such direct application of the flame retardant to the interior surface of the fabric is indicated by the definition of the claim terms "exterior surface" and "interior surface" discussed above. It is also indicated by the Bunyan specification which invariably discloses direct application of the flame retardant to the fabric member. (E.g., Exhibit A, Fig. 6 showing direct application of the flame retardant to the fabric). Note also that in the "Broad Statement of the

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Invention," the coating on the interior surface of the jacket is described as blocking the pores of the fabric to retain the foam therein without penetrating or bleeding through to the exterior surface (Exhibit A, 3:60-66). At no point does the Bunyan specification disclose indirect

application of the flame retardant, i.e., application of the flame retardant to an intermediate layer of the fabric. Seiren's definition is also consistent with the Federal Circuit's claim construction in Power Mosfet Techs. v. Siemens AG, 378 F.3d 1396 (Fed. Cir. 2004). There, the claim recited a semiconductor device in which a "second contact layer contacting with all the first and second semiconductor regions to form a second interface." The Federal Circuit construed the limitation to require direct physical contact between the contact layer and the semiconductor regions, despite the fact that the claim did not recite the word "direct," whereas other claims in the patent did. 378 F.3d at 1403, 1407-1410. Similarly, the recitation in claim 1, "coating at least a portion of the interior surface," means that flame retardant layer is applied directly to the interior surface of the fabric member. e. "...rating of V-0..."

Claim 1 recites a "flame retardant layer being effective to afford said gasket a flame class rating of V-0 under Underwriter's Laboratories (UL) Standard No. 94." Claim 1 thus refers to the capability of the flame retardant layer, rather to the actual rating it achieves for the claimed gasket. The claim expression "rating of V-0" means that the gasket would receive a V-0 rating if it were tested according to Underwriter's Laboratories (UL). If claim 1 were construed as urged by Parker-Hannifin -- the gasket "has been accorded a V-0 rating by UL after testing for flammability under UL Standard No. 94" ­ the claim words "effective to afford" would lose their meaning. Innova/Pure Water, Inc. v. Safari

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Water Filtration Sys.,Inc., 381 F.3d 1111, 1119 (Fed. Cir. 2004) (every term is presumed to add some meaning to the claim). Moreover, if Parker-Hannifin wanted the direct definition of the gasket it now proposes, it could have used the type of simple declarative wording used in connection with the core member ­ e.g., "the gasket is V-0 rated under UL Standard No. 94." f. "...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 electricallyconductive ..."

Claim 1 describes the flame retardant layer "penetrating into said fabric member ...such that the exterior surface of said fabric member remains electrically conductive." Thus, the degree of flame penetration into the fabric is recited in functional terms, i.e., so that the exterior surface of the fabric remains "electrically conductive." This term, "electrically

conductive," is expressly defined in the Bunyan specification as meaning "that the fabric may be rendered conductive, i.e., to a surface resistivity of about 0.1 /sq or less by reason of the conductive materials in the fabric. (Exhibit A, 5:46-48; emphasis added). This is an explicit definition of the claim term, not merely a reference to a preferred embodiment. Accordingly, the limitation 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." This interpretation is supported by the specification, particularly Fig. 2 which shows some entry of the flame retardant into the fabric. As a practical matter, such entry is needed to maintain the physical union of the fabric member and the flame retardant layer because they would not react in a manner needed to chemically maintain that union.

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Dictionary definitions of "penetrate" also support this interpretation, for instance the definition of "penetrate" as "find access into or through...pierce...permeate." See Exhibit D, The Oxford Desk Dictionary, 425 (1995). Such penetration, however, must be controlled so that the first side of the porous fabric member remains electrically conductive ­ the "surface conductivity of the opposite side of the fabric therefore is not compromised in EMI shielding applications." (Exhibit A, 3:59-61). It is not uncommon for courts to construe a claim term according to mathematical values expressly disclosed in the specification. In Modine Mfg. Co. v. United States Int'l Trade Comm'n, the patent claimed a condenser for a refrigerant in a cooling system comprising, inter alia, flow paths of "relatively small hydraulic diameter." The Federal Circuit held that the public was entitled to rely on the disclosure in the specification of the numeric range "about 0.0150.040 inch" as a definition for "relatively small." 75 F.3d 1545, 1552 (Fed. Cir. 1996).

Similarly, in Hoechst Celanese Corp. v. BP Chemicals, Ltd., the Federal Circuit construed a claim term to have a specific numerical value in view of the disclosure in the specification: "[b]y the term `stable,' it is meant that the resin will not chemically decompose, or change more than about 50 percent of its dry physical dimension upon being exposed to the organic medium containing the iodide compounds." 78 F.3d 1757 (Fed. Cir. 1996).3

3

See also Rhodia Chimie v. PPG Indus., where the claimed invention was a composition of "dust-free and non-dusting" silica particulates for use as a filler. The Federal Circuit found that the expression "dust-free and non-dusting" could not be construed to mean "no dust at all" because the specification stated that the invention produced at least some dust, though less dust than the prior art. The Federal Circuit therefore relied on two examples from the specification to determine that the claimed invention was limited to embodiments having either the specific dust content of one of the examples or a lower value. 402 F.3d 1371, 1380 (Fed. Cir. 2005).

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g.

the remaining claims

Claim 8 of the '348 patent and the claims in dispute in the '536 and '095 patents contain the same terms discussed above, and the same analysis applies to them as well. Seiren's claim construction for all three patents is summarized in the charts below. U.S. Patent No. 6,521,348 Claim 1 Claim Element A flame retardant, electromagnetic interference (EMI) shielding gasket comprising: a resilient core member which is not V-0 rated under Underwriter's Laboratories (UL) Standard No. 94 extending lengthwise along a central longitudinal axis and having an outer surface extending circumferentially about said longitudinal axis, said core member being formed of a foamed elastomeric material; an electrically-conductive fabric member surrounding the outer surface of said core member, said fabric member having an interior surface disposed facing the outer surface of said core member and an oppositelyfacing, exterior surface, at least the exterior surface being electrically-conductive and the exterior surface defining with the interior surface a thickness dimension of the fabric member therebetween; Claim Constructions

"...not V-0 rated..." means The "core member" has not received a V-0 rating under Underwriter's Laboratories UL Standard No. 94.

"...exterior surface..." means The outer face, outside or exterior boundary of the fabric member. "...thickness dimension..." means

and a flame retardant layer coating at least a portion of the interior surface of said fabric member,

The dimension represented by "t1" in Fig. 2. "...coating at least a portion of the interior surface..." means The flame retardant layer is directly applied to the interior surface of the fabric member, covering at least a portion of that interior surface.

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said flame retardant layer being effective to afford said gasket a flame class rating of V-0 under Underwriter's Laboratories (UL) Standard No. 94 and 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 electricallyconductive.

"...rating of V-0..." means The "gasket" would receive a V-0 rating if it were tested according to Underwriter's Laboratories (UL) Standard No. 94. "...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." means 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.

8

A flame retardant, electromagnetic interference (EMI) shielding gasket comprising: a resilient core member extending lengthwise along a central longitudinal axis and having an outer surface extending circumferentially about said longitudinal axis, said core member being formed of a foamed elastomeric material; an electrically-conductive fabric member surrounding the outer surface of said core member, said fabric member having an interior surface disposed facing the outer surface of said core member and an oppositely-facing, exterior surface, at least the exterior surface being electrically-conductive and the exterior surface defining with the interior surface a thickness dimension of the fabric member therebetween; "...exterior surface..." means The outer face, outside or exterior boundary of the fabric member. "...thickness dimension..." means The dimension represented by "t1" in Fig. 2.

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and a flame retardant layer coating at least a portion of the interior surface of said fabric member,

"...coating at least a portion of the interior surface..." means The flame retardant layer is directly applied to the interior surface of the fabric member, covering at least a portion of that interior surface.

said flame retardant layer comprising between about 30-50% by weight of one or more flame retardant additives and 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 weight limitation is indefinite. "...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." means 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.

15

The gasket of claim 8 wherein said flame retardant layer is effective to afford the gasket a flame class rating of V-0 under Underwriter's Laboratories (UL) Standard No. 94.

"... rating of V-0..." means The "gasket" would receive a V-0 rating if it were tested according to Underwriter's Laboratories (UL) Standard No. 94.

U.S. Patent No. 6,716,536 Claim Claim Element 1 A flame retardant, electromagnetic interference (EMI) shielding gasket comprising: a resilient core member extending lengthwise along a central longitudinal axis and having an outer surface extending circumferentially about said longitudinal axis, said core member being formed of a foamed elastomeric material; Claim Constructions

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an electrically-conductive fabric member surrounding the outer surface of said core member, said fabric member having an interior surface disposed facing the outer surface of said core member and an oppositelyfacing, exterior surface, at least the exterior surface being "...exterior surface..." means electrically-conductive and the exterior surface defining with the interior surface The outer face, outside or exterior boundary a thickness dimension of the fabric of the fabric member. member therebetween; "...thickness dimension..." means The dimension represented by "t1" in Fig. 2. and a flame retardant layer coating at least a portion of the interior surface of said fabric member,

"...coating at least a portion of the interior surface..." means The flame retardant layer is directly applied to the interior surface of the fabric member, covering at least a portion of that interior surface.

said flame retardant layer comprising at least about 30% by weight of one or more flame retardant additives and 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 weight limitation is indefinite.

"...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." means 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.

8

The gasket of claim 1 wherein said flame retardant layer is effective to afford the gasket a flame class rating of V-0 under Underwriter's Laboratories (UL) Standard No. 94.

"... rating of V-0..." means

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The "gasket" would receive a V-0 rating if it were tested according to Underwriter's Laboratories (UL) Standard No. 94.

U.S. Patent No. 6,777,095 Claim Claim Element 1 A flame retardant, electromagnetic interference (EMI) shielding gasket comprising: Claim Constructions

a resilient core member extending lengthwise along a central longitudinal axis and having an outer surface extending circumferentially about said longitudinal axis, said core member being formed of a foamed elastomeric material; an electrically-conductive fabric member surrounding the outer surface of said core member, said fabric member having an interior surface disposed facing the outer surface of said core member and an oppositelyfacing, exterior surface, at least the exterior surface being "...exterior surface..." means electrically-conductive and the exterior surface defining with the interior surface The outer face, outside or exterior boundary a thickness dimension of the fabric of the fabric member. member therebetween; and "...thickness dimension..." means The dimension represented by "t1" in Fig. 2. a flame retardant layer coating at least a portion of the interior surface of said fabric member,

"...coating at least a portion of the interior surface..." means The flame retardant layer is directly applied to the interior surface of the fabric member, covering at least a portion of that interior surface.

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said flame retardant layer comprising at least about 50% by dry weight of one or more flame retardant additives and 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 weight limitation is indefinite. "...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." means 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.

D.

The Flame Retardant Content Limitations Are Indefinite A patent claim is invalid if it fails to meet the definiteness requirement under 35

U.S.C §112. If a court determines that a claim limitation does not provide meaningfully precise claim scope, even if it can be reduced to words, then the claim is indefinite as a matter of law. Halliburton Energy Svcs. v. M-I LLC, 514 F.3d 1244, 1251 (Fed. Cir. 2008). Claim 8 of the '348 patent and claim 1 of the '536 patent recite that the flame retardant layer comprises an amount of flame retardant "by weight," but fail to state whether the content is wet weight or dry weight. Claim 1 of the '095 patent recites that the flame retardant layer comprises an amount of flame retardant "by dry weight," but 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 "by weight" and "by dry weight" do 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

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there is no guidance in the intrinsic record as to which protocol to follow, the claim is invalid as indefinite). V. CONCLUSION For the reasons stated, Defendant Seiren Co., Ltd., requests that the claim terms in dispute be construed as discussed above. 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 1, 2008
2392100

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CERTIFICATE OF SERVICE I hereby certify that on July 1, 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 1, 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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