Free Brief (Non Appeal) - District Court of Arizona - Arizona

1 Terry E. Fenzl (#002485) C. Mark Kittredge (#013907) 2 PERKINS COIE BROWN & BAIN P.A. 3 2901 North Central Avenue Post Office Box 400 4 Phoenix, Arizona 85001-0400 (602) 351-8000 5 [email protected] 6 [email protected] 7 Attorneys for Defendants 8 9 10 11 12 Richard G. Krauth, an individual, and R.M. Wade & Co., an Oregon corporation, 13 Plaintiffs, 14 15 vs. No. CV 04-0544 PHX PGR UNITED STATES DISTRICT COURT DISTRICT OF ARIZONA

PHELPS DODGE'S RESPONSE CLAIM CONSTRUCTION BRIEF

16 Phelps Dodge Corporation, a New York 17 corporation, et al., 18 Defendants.

19 Phelps Dodge Corporation, a New York 20 corporation, et al., 21 22 23 Counterclaim Plaintiffs, vs.

Richard G. Krauth, an individual, and R.M. 24 Wade & Co., an Oregon corporation, 25 26 27 28
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Counterclaim Defendants.

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 I. F. G. H. E. B. C. D. 3. 4. 2.

Table of Contents Page Table of Authorities............................................................................................................ iii Introduction ......................................................................................................................... 1 Argument ............................................................................................................................. 1 I. DISPUTED CLAIM TERMS .................................................................................. 2 A. In Both Patents, the Preambles and Their Terms are Claim Limitations. ................................................................................................... 2 1. The Plain Language Demonstrates that the Preambles Provide Structure and, Therefore, are Limitations. ......................................... 3 The Specification Repeatedly and Unequivocally Describes "This Invention" as Having the Limitations in the Preamble. ........... 5 Plaintiffs Relied on the Preamble Terms to Distinguish Prior Art during Prosecution of the Patents. ............................................... 7 Finally, Plaintiffs Have Relied on These Preamble Terms as Limitations in this Lawsuit. ............................................................... 9

In Both Patents, the Term "Composed of."................................................. 10 In both patents, the term "Ore bed." ........................................................... 12 The Term "Crushed metal-laden ore" in the `806 Patent and the Term "Granular metal-laden ore" in the `279 Patent. ................................. 13 1. 2. "Crushed" as used in the `806 patent. .............................................. 13 "Granular" as used in the `279 patent. ............................................. 15

In Both Patents, the Term "Impervious pad." ............................................. 16 In Both Patents, the Term "Communicating." ............................................ 17 In Both Patents, the Term "Pre-calibrated" and in the `279 Patent the Term "Calibrating."..................................................................................... 19 In both patents, the term "Overlapping patterns." ...................................... 21 In both patents, the term "Predetermined flow rates." ................................ 24

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J.

In the `806 patent, the term "Labyrinth-type flow passage means."........... 25

Conclusion ......................................................................................................................... 26

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Table of Authorities Page Cases AFG Indus., Inc. v. Cardinal IG Co., 239 F.3d 1239 (Fed. Cir. 2001) ....................... 10, 11 Allen Eng'g Corp. v. Bartell Indus., Inc., 299 F.3d 1336 (Fed. Cir. 2002)......................... 4 Bell Commc'ns Research, Inc. v. Vitalink Commc'ns Corp., 55 F.3d 615 (Fed. Cir. 1995) ............................................................................................... 3, 4, 14, 16 Bicon, Inc. v. Straumann Co, 441 F.3d 945 (Fed. Cir. 2006) ......................................... 4, 5 Boss Control, Inc. v. Bombardier Inc., 410 F.3d 1372, (Fed. Cir. 2005).................... 25, 26 Catalina Mktg. Int'l, Inc. v. Coolsavings.com, 289 F.3d 801 (Fed. Cir. 2002) ......... passim Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973 (Fed. Cir. 1999)..................................... 21 Eltech Sys. Corp. v. PPG Indus., 903 F.2d 805 (Fed. Cir. 1990)............................ 9, 17, 19 Fantasy Sports Props., Inc. v Sportsline.com, Inc., 287 F.3d 1108 (Fed. Cir. 2002) ..................................................................................................... 7, 8, 16 Gen. Elec. Co. v. Nintendo Co., 179 F.3d 1350 (Fed. Cir. 1999) .......................... 5, 14, 17 Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473 (Fed. Cir. 1998).......................... 22 Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367 (Fed. Cir. 2005)........................ 20 In re Bertsch, 132 F.2d 1014 (CCPA 1942)...................................................................... 11 In re Cruciferous Sprout Litig., 301 F.3d 1343 (Fed. Cir. 2002) ........................................ 7 Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364 (Fed. Cir. 2003)....................... 7, 8 Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996)......................................... 13 NTP Inc. v. Research in Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005), cert. denied, 126 S. Ct. 1174 (2006) ................................................................... 3, 14, 17 Phillips Petroleum Co. v. Huntsman Polymers Corp., 157 F.3d 866 (Fed. Cir. 1998) ............................................................................................................. 16 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), cert. denied, 126 S. Ct. 1332 (2006) ........................................................................................... passim

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Rowe v. Dror, 112 F.3d 473 (Fed. Cir. 1997) ..................................................................... 3 Schumer v. Lab. Computer Sys., Inc., 308 F.3d 1304 (Fed. Cir. 2002) .............................. 4 Scimed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337 (Fed. Cir. 2001) ......................................................................................................... 6, 14 Storage Tech. Corp. v. Cisco Sys., Inc., 329 F.3d 823 (Fed Cir. 2003) .............................. 6 Teleflex, Inc., v. Ficosa N. Am. Corp., 299 F.3d 1313 (Fed. Cir. 2002) ........................... 20 Wang Labs., Inc. v. Am. Online, Inc., 197 F.3d 1377 (Fed. Cir. 1999)......................... 5, 14

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Introduction For each of the disputed claim construction issues, Plaintiffs' proposed claim construction violates the cardinal precepts of claim construction by, among other things: (1) trying to write the limitations out of the claims; (2) proposing constructions that are not found in the claims, specification, or prosecution history; (3) contradicting and ignoring the plain, ordinary meaning of claim terms; and (4) using extrinsic evidence to construe claim terms in a manner that contradicts the ordinary meaning that is discernable from the intrinsic evidence alone. Thus Plaintiffs rewrite and recast the patent claims in ways that contradict a basic tenet of patent law: the inventor is required to explain precisely what is included in the claimed invention and what is outside its scope. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc), cert. denied, 126 S. Ct. 1332 (2006). The correct claim construction can be reached, however, by following the "bedrock principle" of patent law: the claims of a patent define the invention, and the analysis begins and ends with the words of the claims themselves. Id. As the en banc Federal Circuit instructs: "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." Id. at 1316. Argument This brief addresses the claim terms that were still in dispute as of the parties' opening claim construction briefs. Since that time the parties have reached agreement, at least in part, on three additional terms as described in the relevant sections below: "granular metal-laden ore," "crushed metal-laden ore" and "impervious pad." For the Court's convenience, all of the claim terms identified in the Corrected Joint Claims Construction Statement are again identified in a new table (attached as Ex. 12), which notes all terms on which the parties agree and the current differences on the remaining

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terms.1 The relevant portions of that table are reproduced in each section below so the Court can easily focus on the specific dispute. Plaintiffs have changed their proposed construction in a number of places and their new construction (when it is clear) is reflected in each table. I. DISPUTED CLAIM TERMS A. In Both Patents, the Preambles and Their Terms are Claim Limitations. Plaintiffs' Proposed Construction Features recited in the preambles should not be construed as claim limitations Phelps Dodge's Proposed Construction Each claim preamble is a limitation to be interpreted as outlined below:

Claim Element Claim preambles

In their opening brief, Plaintiffs apparently concede (at 13) that the preambles contain a limitation: the term "ore bed." preambles define "ore bed" as follows: Of course, the relevant portions of the

"an ore bed composed of crushed metal-laden ore deposited on an impervious pad." [`806 patent claim 1, col.6 ll.17-18] and, "an ore bed composed of granular metal-laden ore positioned on an impervious pad composed of material impervious to liquid." [`279 patent claim 1, col.6 ll.23-25] Plaintiffs attempt to avoid the plain meaning of these definitions by insisting that the term "ore bed" is the only limitation in the preambles. That is, Plaintiffs argue that "ore bed" in the preamble is a limitation, but the definition of "ore bed" provided in the

preamble is not. The principal case cited by Plaintiffs, Catalina Mktg. Int'l, Inc. v. Coolsavings.com, 289 F.3d 801 (Fed. Cir. 2002), does not support their position. The The Exhibits attached to this Response Brief are numbered consecutively with the Exhibits attached to Phelps Dodge's Opening Claim Construction Brief ("Defs.' Br.").
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preamble in Catalina Mktg. ("a plurality of remote terminals located at predesignated sites such as consumer stores,") does not define or provide structure for the remote

terminals; it merely identifies a suggested location for those terminals. Id. at 805, 810. In sharp contrast, the preambles here actually define the composition and structure of the "ore bed." Moreover, the Catalina Mktg. court reviewed the claims, specification and prosecution history to determine that the location of the subject terminals was not an important aspect of the invention and, therefore, not a limitation of the claims. Id. at 810. As discussed below, however, a similar review here demonstrates that the preambles of the `806 and `279 patents are limitations that define "ore bed" as it is used in the claims. 1. The Plain Language Demonstrates that the Preambles Provide Structure and, Therefore, are Limitations.

On its face, the preamble language is simple, unambiguous and defines the composition of "ore bed," which Plaintiffs now admit is a claim limitation. This should end the debate. See NTP Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1305-06 (Fed. Cir. 2005) ("a preamble generally limits the claimed invention if it `recites essential structure or steps, or if it is necessary to give life, meaning, and vitality to the claim.'"), cert. denied, 126 S. Ct. 1174 (2006); Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997) ("Where a patentee uses the claim preamble to recite structural limitations of his claimed invention [as opposed to a statement of purpose], the PTO [Patent Office] and courts give effect to that usage."). Plaintiffs argue (at 16), however, that deleting the phrase "composed of crushed metal-laden ore deposited on an impervious pad" from the preamble will not affect the remainder of the claim. But that proves too much. Plaintiffs admit that "ore bed" in the preamble provides the antecedent basis for "said ore bed" as that term appears throughout the rest of the claims. [at 14-15] Of course, there is simply no reason to reference "said ore bed" in the body of the claim unless it refers to the "ore bed" as defined previously in the preamble. Bell Commc'ns Research, Inc. v. Vitalink Commc'ns Corp., 55 F.3d 615, 621 (Fed. Cir. 1995), is directly on point. There the court considered the preamble
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language "packet including a source address and a destination address." Id at 618 (emphasis added). Because the body of the claim referred to "said packet," the Court held that it "expressly incorporate[d] by reference the preamble phrase `said packet including a source address and a destination address.'" Id. at 621 (emphasis in original). Just as here, it would have been nonsense for the Bell Commc'ns court to hold that "said packet" in the body of the claim referred back to "packet" in the preamble, but not to the definition of packet provided in the preamble.2 Plaintiffs' reliance on Schumer v. Lab. Computer Sys., Inc., 308 F.3d 1304 (Fed. Cir. 2002) is misplaced. There, the issue was whether a preamble, by reciting three standard features of a computer program, required all three to be present at all times. Id. at 1311. The court looked to the claim body, which described the features in the

alternative, and held that the preamble could not be a limitation because it would alter the plain meaning of the words in the body of the claim. Id. at 1312. There was nothing else in the specification or prosecution history to change this result. Id. at 1312-13. Plaintiffs are correct (at 13) when they cite to the recent Bicon, Inc. v. Straumann Co. decision, which is directly on point. 441 F.3d 945, 950-53 (Fed. Cir. 2006). There, the court held that where a structure in the claim body was "described in the preamble," that preamble was a limitation. Id. at 952. The court explained that "[f]irst, ... the preamble of claim 5 is not limited to stating the purpose or intended use of the invention, but contains structural features of the abutment." Id. (emphasis added). In addition, "the body of the claim does not recite the complete invention" because "the references to the abutment in the body of the claim derive their antecedent basis from the preamble." Id. at Plaintiffs also argue that the court can ignore the terms "crushed," "granular" and "impervious pad" because they are not part of the "heart of the invention" (at 13 (emphasis added)) and are only "ancillary [to] the core invention." [at 15 (emphasis added)] This, of course, is reversible error. Allen Eng'g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1345 (Fed. Cir. 2002) (reversing claim construction and summary judgment of non-infringement because "[i]t is well settled that there is no legally recognizable or protected `essential' element, gist or `heart' of the invention. . . ." (internal quotes omitted)).
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952-53. Finally, "because the preamble recites structural features of the abutment, it is apparent that the claim drafter chose to use both the preamble and the body of the claim to define the subject matter of the claimed invention." Id. at 953. In short, the court determined, "the preamble recites structure for the abutment that goes well beyond what is necessary to describe the intended purpose of the [invention]." Id. This case is no different: "[t]he recitations of the [preamble] do not serve to describe the function of [the invention], but instead are necessary to define the structure of the claimed device,"­ that is, the composition of the "ore bed." Id. (emphasis added). As the Bicon court explained: Allowing a patentee to argue that physical structures and characteristics specifically described in a claim are merely superfluous would render the scope of the patent ambiguous, leaving examiners and the public to guess about which claim language the drafter deems necessary to his claimed invention and which language is merely superfluous, nonlimiting elaboration. Id. at 950 (emphasis added). 2. The Specification Repeatedly and Unequivocally Describes "This Invention" as Having the Limitations in the Preamble.

Plaintiffs argue (at 15) that, because the "Background of the Invention" section of the patent explains that heap leach mining can be performed on either crushed or run-ofmine ore, the preamble requirement of crushed ore is not a limitation. This argument completely misses the point. True, the Background of the Invention section expressly recognizes that, in general, heap leach mining can and often is performed on either "runof-mine" ore on the one hand, or "crushed" ore on the other hand. [`806 patent col.1 ll.31-34, 41-44] But that section of the specification describes background technology, not the invention. Wang Labs., Inc. v. Am. Online, Inc., 197 F.3d 1377, 1382 (Fed. Cir. 1999) (holding references in "Background of the Invention" section are "not . . . an enlargement of the invention described in the patent"). describes the actual invention, it always calls for the use of "crushed" ore. For example: Whenever the specification

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TECHNICAL FIELD. This invention relates to hydrometallurgy and more particularly to the application of a leaching solution over a bed of crushed metal-laden ore to separate-out a pregnant solution of metals therefrom. [`806 patent col.1 ll.11-14; `279 patent col.1 ll.15-18 (emphasis added)] SUMMARY OF THE INVENTION . . . The controlled percolation system of this invention comprises supply means for conducting a leaching solution adjacent to an ore bed composed of crushed metal-laden ore . . . . [`806 patent col.2 ll.31-40; `279 patent col.2 ll.36-46 (emphasis added)] Likewise, the specification always describes the invention as including an impervious pad. For example: ABSTRACT. A system for heap leach mining comprises supply and header pipes for conducting leaching solution alongside a bed or "heap" of crushed metal-laden ore deposited on an impervious pad. . . . The system and method of this invention provide numerous advantages over conventional surface spraying systems and methods, including substantial cost savings thereover. [`806 patent & `279 patent Abstract (emphasis added)] The specification demonstrates that the bed of crushed ore and the impervious pad are key aspects of the invention; crushed ore and the impervious pad are always present and never described as optional. Therefore, these preamble terms are part of the claims, and no other conclusion is possible. Scimed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1344 (Fed. Cir. 2001) (holding that explicit reference in the specification to "the invention" as "employing a [particular] structure" required that structure to be a limitation of the claims, even where that structure was not in the claim itself); Storage Tech. Corp. v. Cisco Sys., Inc., 329 F.3d 823, 835 (Fed Cir. 2003) (holding that the preamble was a limitation by "reciting additional structure . . . underscored as important by the specification."). [See also Defs.' Br. 13, 18, 20-21] Indeed, Plaintiffs' principal case, Catalina Mktg., emphasized that the preamble is a limitation when it recites "additional structure or steps underscored as important by the specification." 289 F.3d at 808. Unlike the specification in Catalina, the specification

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here repeatedly emphasizes the importance of the subject preamble limitations of "crushed" ore and an "impervious pad." 3. Plaintiffs Relied on the Preamble Terms to Distinguish Prior Art during Prosecution of the Patents.

Plaintiffs' preamble argument is directly contradicted by representations they made to the Patent Office to distinguish their invention from the prior art. Critically, when Plaintiffs requested reexamination of their patents in September 2004, while this case was pending and in response to prior art produced in this case, they prepared a table outlining "each limitation of the claims" and noting which prior art references did and did not meet each of the identified limitations. [Ex. 11 at 5] That table specifically identified the preamble as a limitation and noted which prior art did not meet the preamble limitation. [Id.] For example, Plaintiffs distinguished the 1978 Rudy Report by noting that it did not meet the preamble limitation of an "ore bed composed of crushed metal-laden ore deposited on an impervious pad." [Id. (emphasis added)] The 1978 Rudy Report discloses an "ore bed," but it does not disclose either "crushed" ore or an "impervious pad." [Ex. 16 at 2-3, 5-6] Plaintiffs simply cannot rely on the preamble terms "crushed" and "impervious pad" to distinguish prior art before the Patent Office and later argue in litigation that the terms are not claim limitations. Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1370 (Fed. Cir. 2003) (holding that because "the applicants clearly relied on the preamble term . . . to distinguish [a prior art reference]," it

"thus limits the claims and is not merely a statement of intended advantage."); In re Cruciferous Sprout Litig., 301 F.3d 1343, 1347-48 (Fed. Cir. 2002) (holding preamble was a limitation where patentee relied on it during reexamination). importance of "crushed ore" to the invention, expressly noting that: "the solution flows or drops down from the dispensing site without being projected . . . prior to contact with the bed of crushed ore." [Ex. 14 at 7, 23 (emphasis in original)] Fantasy Sports Props., Inc. Indeed, the Patent Office's decision on the reexamination underscores the

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v Sportsline.com, Inc., 287 F.3d 1108, 1118 n.3 (Fed. Cir. 2002) (holding preamble was limitation because the examiner recognized it as such). As discussed in Phelps Dodge's Opening Brief (at 10-11, 16-17), the remainder of the prosecution history also demonstrates that the preamble terms are claim limitations. In summary: The applicant expressly relied on the preamble to distinguish prior art. [Ex. 4, PDA000205 (emphasis added); Ex. 15, PDA000123-24] Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1370 (Fed. Cir. 2003) (holding that reliance on preamble during prosecution to distinguish prior art "transforms" preamble into claim limitation). The entire `279 patent application was rejected based on the "impervious pad" term in the preamble, demonstrating that the Patent Office viewed "impervious pad" as a limitation. [Ex. 4, PDA000393] The applicant conceded the importance of the term, amending the preamble to further explain that the impervious pad must be "composed of material impervious to liquid," demonstrating that the preambles are part of the claims. [Id., PDA000397-99] The applicant submitted sworn declarations on six occasions in response to rejections, informing the Patent Office that "my invention" (or "Applicant's invention") included all of the preamble language. [Ex. 4, PDA000088-89; PDA000291; PDA000304-305; PDA000136; PDA000428; Ex. 15, PDA000441 (emphasis added)] Furthermore, applicant submitted an article in response to two separate rejections, describing the invention being used with the crushed ore of the preamble. [Ex. 4, PDA000101-103; PDA000317-319] On three occasions the Patent Office rejected all claims as unpatentable over the "Herndon" reference, explaining that Herndon likewise piled ore onto "an impervious pad," thus expressly noting that the Patent Office viewed the "impervious pad" as a limitation. [Ex. 15, PDA000129; PDA000149; PDA000178] In another rejection, the Patent Office cited a reference for its "concrete foundation," which was used as a base for solution recovery. [Ex. 4, PDA000393; Ex. 17 (Rose patent)]







a limitation when it is relied on "during prosecution to distinguish the claimed invention

Again, Plaintiffs' principal case, Catalina Mktg., emphasized that the preamble is

from the prior art." 289 F.3d at 808. Unlike the Catalina case, the prosecution history here is replete with such reliance.
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4.

Finally, Plaintiffs Have Relied on These Preamble Terms as Limitations in this Lawsuit.

preamble's "impervious pad" limitation to distinguish the claimed invention over the prior art. [Ex. 10 at 14, 18 ("The CJ system did not utilize an impervious pad composed of material impervious to liquid.")] As with the similar arguments made before the

Plaintiffs' verified discovery responses during this very lawsuit have used the

Patent Office, after making such distinctions Plaintiffs cannot reasonably deny that the preamble terms are claim limitations. Eltech Sys. Corp. v. PPG Indus., 903 F.2d 805, 809 (Fed. Cir. 1990) (holding claim "interpretation [was] clearly required by the [plaintiff's] and its expert's own statements, . . . and by [plaintiff's] answer to an interrogatory."). an impervious pad (calling it a "critical component") in heap leaching. [Ex. 9 at 9 ¶ 14 (emphasis added); see also Ex. 13, Jenkins Dep. 80:5 ("critical")] He reiterated in his report that the impervious pad is "important," and that it must be used to recover solution and prevent it from passing through. [Ex. 9, Jenkins Rpt. at 9 ¶ 14 (emphasis added); id. at 7-9 (regarding crushed ore); Ex. 13, Jenkins Dep. 80:5; id. at 39:18-23, 41:8-14, 53:1356:18, 128:10-17] Likewise, Plaintiffs' opening brief calls the impervious pad a "basic bed, even trying to define "impervious pad" that way. [Pls. Br. 2, 24-25] component[]" of heap leaching, and contends that it must serve as the "base" of the ore Finally, Plaintiffs' expert expressly relies on the preamble language at issue to Indeed, Plaintiffs' expert has emphasized the importance of both crushed ore and

help him understand and define all of the subject terms: ore bed, crushed, granular and impervious pad. [Ex. 9, Jenkins Rpt. at 4 ¶ 11; Ex. 13, Jenkins Dep. 73:5-13] Accordingly, the Court should constue the entire preamble phrases at issue to be limitations as proposed by Phelps Dodge.

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B.

In Both Patents, the Term "Composed of." Plaintiffs' Proposed Construction If construction of the preamble is necessary "Composed of" should be interpreted to mean that the "ore bed" includes the listed materials ("crushed metalladen ore") but may include other materials as well. Other italicized terms should be interpreted as outlined below. Phelps Dodge's Proposed Construction "Composed of" should be interpreted to mean: that the "ore bed" is limited to the listed materials ("crushed metal-laden ore") and that other types of ore are excluded. Accordingly, the phrase should be interpreted to mean an ore bed made only of crushed metal-laden ore deposited on an impervious pad, with each of the italicized terms interpreted as outlined below.

Claim Element An ore bed composed of crushed metalladen ore deposited on an impervious pad

bed" with its constituent elements: "an ore bed composed of crushed [granular] metal laden ore deposited on an impervious pad." [`806 patent col.6 ll.17-18; `279 patent col.6 ll.23-25; see also `806 patent col.2 ll.39-40, 52-53; col.3 ll.9-10; `279 patent col.2

The term "composed of" is a transition phrase within the preamble linking "ore

ll.44-45, 58-59; col.3 ll.15-16] Until now, Plaintiffs have asserted that "composed of" is include other materials as well." [Corrected Joint Statement 4.] Citing AFG Indus., Inc.

a completely open transition phrase, meaning it "includes the listed materials . . . but may

v. Cardinal IG Co., 239 F.3d 1239, 1245 (Fed. Cir. 2001), Plaintiffs now argue that "composed of" should be "construed as `consisting essentially of,'" meaning that the "`ore bed composed of' crushed or granulated ore may be open to other sizes of ore that do not materially affect the controlled percolation system or method for heap leach mining." [Pls.' Br. 17, 19] As outlined in Phelps Dodge's Opening Brief, AFG Indus., that it "exclude[s] any elements, steps, or ingredients not specified in the claim"; or (ii) instructs that "composed of" is either: (i) a completely closed transition phrase, meaning

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mostly closed, meaning that it "`excludes ingredients that would materially affect the basic and novel characteristics of the claimed [invention].'"3 The AFG Indus. court determined which construction applied based on an analysis of the specification and expert testimony regarding how the presence of non-listed ingredients would affect the invention. Id. at 1245-47. As discussed in Section I.A.2. above and in Phelps Dodge's Opening Brief, the patents here distinguish between crushed and run-of-mine ore, state that the invention uses only crushed ore, stress the importance of crushed ore, and include only crushed (or granular) ore in the claims. [Defs.' Br. 9, 13-14, 18-21] The prosecution history, as discussed above and in Phelps Dodge's Opening Brief, also supports this analysis. [Supra § I.A.3; Defs.' Br. 10-11, 17] Without citation to any authority, Plaintiffs argue (at 18) that "the size of the

pieces of ore leached does not materially affect the basic and novel properties of the invention." Plaintiffs' own expert witness contradicts this assertion. Indeed, the expert witnesses for both parties agree that there are material differences between leaching "crushed" and "run-of-mine" ore and that one is more likely to get the uniform leaching and overlapping patterns required by the patents with crushed ore. [Ex. 13, Jenkins Dep. 53:13-54:8, 54:22-55:8, 55:22-56:18, 128:10-17; Defs.' Br. 13, 17-18; Ex. 8, Dr. Kuhn Rpt. at 9 ¶¶ 47-49]

Thus, the specification and expert testimony demonstrate the importance of using crushed ore in the claimed invention. Accordingly, under AFG Indus., Inc., "composed of" in these patents must be a closed transition phrase, as proposed by Phelps Dodge.

See AFG Indus., Inc. v. Cardinal IG Co., 239 F.3d 1239, 1245 (Fed. Cir. 2001); see also In re Bertsch, 132 F.2d 1014, 1019-20 (CCPA 1942) (holding "composed of" means "consisting of," which "exclude[s]" other materials); Manual of Patent Examining Procedure ("MPEP") § 2111.03 (same) (attached as Ex. 7).

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C.

In both patents, the term "Ore bed." Plaintiffs' Proposed Construction A pile or heap of ore Phelps Dodge's Proposed Construction A pile of ore that has been spread out and prepared for heap or dump leach mining. Such an ore bed can be placed on top of a previously leached ore bed, resulting in two separate ore beds. The '806 patent further defines "Ore Bed" to be "composed of crushed metal-laden ore deposited on an impervious pad."

Claim Element Ore bed

The '279 patent further defines "Ore Bed" to be "composed of granular metal-laden ore positioned on an impervious pad composed of material impervious to liquid." Plaintiffs' proposed construction of "ore bed" as "a pile or heap of ore" simply

provides no guidance to the jury. Interestingly, while Plaintiffs want to define "ore bed"

as simply as "a pile or heap," they also acknowledge that the patents define "heap" as ore

that has been "suitably spread" for leaching. [Pls.' Br. 19 (quoting `806 patent col.1

ll.31-34)] Plaintiffs' expert testified to this as well. [Ex. 13, Jenkins Dep. 69:24-70:6; Ex. 9, Jenkins Rpt. at 6] More importantly, however, Plaintiffs admit (as they must) that the specification and claims expressly recognize that when ore beds are stacked on top of each other they do not form a single ore bed, but remain as separate ore beds. [Pls.' Br. 20] Without explanation, however, Plaintiffs refuse to include this distinction in the definition of "ore bed." This distinction will be important for the jury because the claims of both patents

require an "ore bed . . . deposited [positioned] on an impervious pad." [`806 patent col.6 already leached ore bed is not "deposited on an impervious pad." Phelps Dodge should

ll.17-18; `279 patent col.6 ll.23-25] Obviously, an ore bed placed directly on top of an

at least be permitted to make such an argument to the jury. However, if Plaintiffs are
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permitted a definition of "ore bed" that ignores (or is silent on) the patents' express distinction of stacked ore beds, the jury could easily be confused into thinking that stacked ore beds can be considered just one big ore bed. Of course, this is a claims construction issue on which the jury deserves to be instructed. Markman v. Westview Instruments, Inc., 517 U.S. 370, 388-89 (1996). Accordingly, "ore bed" is a claim limitation and should be construed as proposed by Phelps Dodge, clearly noting that multiple stacked ore beds are not a single ore bed. D. The Term "Crushed metal-laden ore" in the `806 Patent and the Term "Granular metal-laden ore" in the `279 Patent. 1. Claim Element Crushed metalladen ore "Crushed" as used in the `806 patent. Plaintiffs' Proposed Construction Phelps Dodge's Proposed Construction

The parties agree that this term should be interpreted to mean: Ore that has been passed through a mechanical device (called a crusher) to reduce the average particle size to a relatively smaller and more uniform size. Phelps Dodge believes that the definition should also include the following sentence, to which Plaintiffs do not agree: Crushed ore is not run-of-mine ore, which is ore removed directly from the mine (often after blasting) and will typically contain particles varying in size from fine particles to large rocks and boulders.

The parties disagree as to whether the term "crushed metal-laden ore" is a limitation as it appears in the preamble. As outlined above, Phelps Dodge believes "crushed metal-laden ore" is a limitation because it expressly defines "ore bed," which Plaintiffs agree is a limitation. In any event, the parties have reached an agreement, at least in part, that, if "crushed metal-laden ore" is a limitation, it should be defined to mean "ore that has been passed through a mechanical device (called a crusher) to reduce the average particle size to a relatively smaller and more uniform size." Plaintiffs believe the definition should end there. Phelps Dodge, however, believes the definition should include the following sentence: "Crushed ore is not run-

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of-mine ore, which is ore removed directly from the mine (often after blasting) and will typically contain particles varying in size from fine particles to large rocks and boulders." This sentence is necessary to clarify the difference between "crushed" and "run-of-mine" ore, both of which will be discussed extensively at trial. Without this clarification, the jury might easily become confused when considering the two types of ore, both of which will contain small particles. More importantly, this important

distinction is expressly recognized in the specification (which explains that both types of ore can be leached but that only "crushed" ore is used in the disclosed invention) and the prosecution history. [See Defs.' Br. § II.D.2.] Courts facing this identical scenario construe claims to make distinctions between what is in the claims and what is not. See, e.g., SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 134043 (holding that because specification disclosed two structures but discussed only one as the invention, proper construction included one structure and "not" the other); Wang Labs., 197 F.3d at 1382 (same; "the only system described and enabled" used a particular structure; "in order to be covered by the claims that subject matter must be sufficiently described as the applicant's invention to meet the requirements of section 112"); Watts, 232 F.3d at 882 (same). That "crushed metal-laden ore" is a claim limitation should be beyond dispute. First, it provides part of the express definition of "ore bed" within the claim: "an ore bed composed of crushed metal-laden ore deposited on an impervious pad". See Bell Commc'ns Research, 55 F.3d at 621 ("by referring to `said packet,' [the body of the claims] expressly incorporate by reference the preamble phrase `said packet including a source address and a destination address.'" (emphasis in original)); see also NTP, 418 at 1305 (holding preamble a limitation because it provided antecedent basis for term used in body of claim). Second, the specification expressly recognizes that heap leach mining can and often is performed on either "run-of-mine" ore on the one hand, or on "crushed" ore on the other hand. [`806 patent col.1 ll.31-34, 41-44] Yet whenever the specification describes the actual invention, it always calls for "crushed" ore. See Gen. Elec. Co. v.
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Nintendo Co., 179 F.3d 1350, 1361-62 (Fed. Cir. 1999) (holding preamble may operate as a limitation when it recites additional structure or steps that are underscored as important by the specification). Third, Plaintiffs relied on "crushed" ore in the preamble to distinguish prior art during prosecution of the patents, most recently during the reexamination. [See § I.A.3. above] Accordingly, "crushed metal-laden ore" should be interpreted to be a claim "Granular" as used in the `279 patent. Plaintiffs' Proposed Construction Phelps Dodge's Proposed Construction

limitation, defined as proposed by Phelps Dodge. 2. Claim Element Granular metalladen ore

The parties agree that granular metal-laden ore should be interpreted the same as crushed metal-laden ore.

The parties disagree as to whether the term "granular metal-laden ore" is a limitation as it appears in the preamble. As outlined above, Phelps Dodge believes "granular metal-laden ore" is a limitation because it expressly defines "ore bed," which Plaintiffs agree is a limitation. In any event, the parties have reached an agreement, at least in part, that if "granular metal-laden ore" is a limitation it should be given the same meaning as "crushed metal-laden ore." Of course, for the reasons discussed above, Phelps Dodge believes that the definition should include the following sentence, emphasizing the distinction between "granular" and "run-of-mine" ore: "Granular ore is not run-of-mine ore, which is ore removed directly from the mine (often after blasting) and will typically contain particles varying in size from fine particles to large rocks and boulders." Accordingly, "granular metal-laden ore" should be interpreted to be a claim limitation, defined as proposed by Phelps Dodge.

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E.

In Both Patents, the Term "Impervious pad." Plaintiffs' Proposed Construction Phelps Dodge's Proposed Construction

Claim Element Impervious pad

The parties agree that this term should be interpreted to mean: a built up layer of added material supporting an ore bed that will not permit the passage of leach solutions under operating pressures into the underlying earth.

appears in the preamble. As outlined above, Phelps Dodge believes "impervious pad" is a limitation because it expressly defines "ore bed," which Plaintiffs agree is a limitation. In any event, the parties have reached an agreement, at least in part, that, if "impervious pad" is a limitation, it should be defined to mean "A built up layer of added material supporting an ore bed that will not permit the passage of leach solutions under operating pressures into the underlying earth." That "impervious pad" is a limitation should be beyond reasonable dispute. First, the plain language of the claims demonstrate that it is part of the express definition of "ore bed": "an ore bed composed of crushed metal-laden ore deposited on an impervious pad" See Bell Commc'ns Research, 55 F.3d at 621. Second, when the entire `279 patent was rejected by the Patent Office based on the preamble term "impervious pad,"

The parties disagree as to whether the term "impervious pad" is a limitation as it

Plaintiffs did not assert that the term could be ignored because it was not a limitation as they assert now; rather, they amended the preamble to overcome the rejection. [Ex. 4, PDA000393, 397-99] See Fantasy Sports Props., Inc. v Sportsline.com, Inc., 287 F.3d 1108, 1118 n.3 (Fed. Cir. 2002) (holding preamble was limitation because applicant "acquiesced" when examiner required preamble to "comply with the written description requirement of 35 U.S.C. § 112."); Phillips Petroleum Co. v. Huntsman Polymers Corp., 157 F.3d 866, 872-73 (Fed. Cir. 1998) (holding preamble was limitation because examiner considered it one during prosecution). Of course, this analysis applies with equal force to the `806 patent--terms are construed consistently throughout claims, including in related patents. NTP, 418 F.3d at 1293 ("Because [the asserted] patents all
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derive from the same parent application and share many common terms, we must interpret the claims consistently across all asserted patents."). Third, in every instance the specification describes the invention as including an impervious pad. [See §I.A.2. above] See Gen. Elec. Co. v. Nintendo Co., 179 F.3d 1350, 1361-62 (Fed. Cir. 1999) (holding preamble may operate as a limitation when it recites additional structure or steps that are underscored as important by the specification). Fourth, as discussed in Section I.A.4. above, Plaintiffs' sworn discovery responses in this lawsuit rely on the preamble's "impervious pad" limitation to distinguish prior art. See Eltech Sys. Corp. v. PPG Indus.,

903 F.2d 805, 809 (Fed. Cir. 1990) (holding claim "interpretation is clearly required by the [plaintiff's] and its expert's own statements, . . . and by [plaintiff's] answer to an interrogatory."). Accordingly, "impervious pad" should be interpreted to be a claim limitation, defined as proposed by Phelps Dodge. F. In Both Patents, the Term "Communicating." Plaintiffs' Proposed Construction Phelps Dodge's Proposed Construction

Claim Element Communicating

Connecting and open to each The flow of leaching solution from other. one point to another. As used in the phrase "emitter means attached to and positioned in spaced and communicating relationship along each of said tube," it means: the emitters are attached to the tube such that liquid inside the tube will flow through one emitter to the next, such that they are connected and open to each other.

As used in the phrase "emitter means attached to and positioned in spaced and communicating relationship along each of said tube," it means: the emitters are attached to the tube such that liquid inside the tube will flow into the emitters.

proposed construction for the term "communicating." Plaintiffs originally asserted that

It is not clear from Plaintiffs' opening brief whether they have changed their

"communicating" meant "connecting and open to each other" and that liquid flows
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"through one emitter to the next." [Corrected Joint Statement 7] Plaintiffs still propose "connecting and open to each other," however, they argue for the first time that this means the "leaching solution can flow between" the emitters. [Pls.' Br. 26, 27 (emphasis added)] Phelps Dodge assumes that Plaintiffs have not changed their position but are still advocating for a construction that requires leaching solution to flow "through one emitter to the next." [Corrected Joint Statement 7] Regardless, Plaintiffs' proposed construction requires an "in-line" emitter as

depicted in Figure 4 of the patent specifications. [Ex. 13, Jenkins Dep. 113:2-12] This construction is wrong for two reasons: First, claim 6 of the `806 patent, which depends Plaintiffs' proposed construction would improperly make this from claim 1, specifically calls for "emitter means compris[ing] an in-line emitter." (emphasis added)

additional requirement of claim 6 redundant and nonsensical. Phillips, 415 F.3d at 131415 ("[T]he presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim."). Obviously, if the inventor intended claim 1 of either patent to be limited to in-line emitters, he would have simply and expressly said so. Second, Plaintiffs' construction also improperly limits the claims to the preferred embodiment. Id. at 1323 ("we have claims of the patent must be construed as being limited to that embodiment"; courts must "avoid importing limitations from the specification into the claims.").

expressly rejected the contention that if a patent describes only a single embodiment, the The patents

explain that "On-line (Button) Emitter[s]" can also be used with the invention.4 [`806 patent col.4 l.52] There is simply no basis to interpret claim 1 in a manner that reads out the "on-line" emitter embodiment. Moreover, Plaintiffs' sworn discovery responses in this case expressly agree with

Phelps Dodge's construction: "communicating" in both patents means "the emitters Attached for the Court's convenience as Ex. 18 is a document Plaintiffs produced that depicts that "On-Line (Button) Emitter."
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must be in fluid communication with the tubes." [Ex. 10 (Pls.' Am. Resp. to Interrog. #1) at 4, 7 (emphasis added)] Plaintiffs should not be permitted to walk away from that position at this late date. See Eltech Sys., 903 F.2d at 809 (holding plaintiff bound to claim construction in interrogatory response). turn to extrinsic evidence from their expert and a dictionary. [Pls.' Br. 26-27 & Ex. C at Not surprisingly, in trying to redefine "communicating," Plaintiffs are forced to

5] Such evidence, however, cannot be used to contradict the term's plain and ordinary meaning and the intrinsic evidence. Phillips, 415 F.3d at 1318-22. G. In Both Patents, the Term "Pre-calibrated" and in the `279 Patent the Term "Calibrating." Plaintiffs' Proposed Construction Emitters selected to allow a certain rate of flow over a specific surface area. Phelps Dodge's Proposed Construction No construction is necessary; this term should be given its plain and ordinary meaning. If construction is required: set or adjusted at some point in time. Calibrating Selecting emitters to allow a certain rate of flow over a specific surface area. No construction is necessary; this term should be given its plain and ordinary meaning. If construction is required: adjusting or setting. Plaintiffs' proposed construction changes the plain simple meaning of

Claim Element Pre-calibrated

"calibrating" to "selecting emitters to allow a certain rate of flow over a specific surface

area" and "pre-calibrated" to "emitters selected to allow a certain rate of flow over a specific surface area." Not only do these constructions defy the plain meaning of the words, contrary to Plaintiffs tortured analysis, they find no support in the specification or elsewhere. calibrated" emitters. Of course, if the applicant meant "selecting emitters," instead of
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The express language of the claims recites "calibrating" emitters and "pre-

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"calibrating emitters" he could easily have said so. That he did not is telling. Indeed, whenever the patentee actually meant "selected," he uses that express word in the claims. [`806 patent col.6 ll.36, 44, 48, 51; `279 patent col.6 ll.48, 56, 60, 64] Plaintiffs should not be permitted to rewrite these claims years later in the middle of litigation to change this result. definition requires that the "selected" emitter only have one flow rate, whereas the claims repeatedly refer to a range of rates. [`806 patent col.6 ll.28, 36-40, 51-52, 65-66; `279 patent col.6 ll.32-33, 41, 49-52, 64-65] Plaintiffs cite and quote the specification, but nothing there suggests that the inventor redefined the plain meaning of either "calibrating" or "pre-calibrated" as Plaintiffs now attempt. Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1374 (Fed. Cir. 2005) (holding patentee had not redefined ordinary meaning: "`words or expressions of manifest exclusion' or `explicit' disclaimers in the specification are necessary to disavow claim scope"); Teleflex, Inc., v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002) ("In the absence of an express intent to impart a novel meaning to claim terms, an inventor's claim terms take on their ordinary meaning."). Indeed, Plaintiffs' own expert witness acknowledged that nothing in the specification or the prosecution history actually refers to "calibrating" or "precalibrated" in terms of Finally, the dependent claims contradict Plaintiffs' proposal: Plaintiffs'

"selecting" emitters. [Ex. 13, Jenkins Dep. 104:14-19] Like the claims, the specification only says that emitters can be pre-calibrated to have a range of rates, and does not require that "calibrating" occur in any particular way or at any particular time. [`806 patent col.4 ll.45-46] equates it with "calibrating." [See, e.g., `806 patent col.3 l.61, col.4 ll.45-46, 59] The specification also allows "pressure compensating" and "non-pressure compensating" Like the claims, the specification uses the word "select" throughout, but never

emitters to be used in the invention--which is likewise in keeping with the claims' requirement that all emitters must be calibrated. [`806 patent col.3 ll.48-49] Plaintiffs inexplicably rely on Figure 4, which depicts an in-line emitter that can be used with the
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invention. [Pls.' Br. 29] But as the specification makes clear, this is only "one type" of emitter that can be used with the invention. [`806 patent col.4 ll.21-22, 47-57] Plaintiffs' citation to the prosecution history is similarly misplaced. As Plaintiffs

acknowledge, given the chance to clarify the term "precalibrated emitter" after the Patent

Office rejected it as "vague and indefinite," the applicant said nothing about "selecting "calibrating" the emitters so they are "pre-calibrated," without limiting how or when that

emitters." [Pls.' Br. 29] Instead, the applicant simply added a method step requiring was to be done and without describing it in terms of "selecting." [Id.] Additionally, the

applicant also said the term was already "well-defined" in the specification. [Ex. 4,

PDA000398-399] But as noted above, the specification says nothing about "selecting" emitters being the same as "calibrating" them. Moreover, to distinguish prior art the applicant submitted a sworn declaration that clearly uses "calibrated" to mean "adjusted," describing how the drip tubes in the prior art reference must be accurately "calibrated" to provide uniform coverage. [Ex. 15, PDA000418] Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 978-79 (Fed. Cir. 1999) (holding patentee was bound by argument distinguishing prior art: "Arguments made during the prosecution of a patent application are given the same weight as claim amendments."). Not surprisingly, Plaintiffs are forced to turn to extrinsic evidence from their expert and a dictionary. [Pls.' Br. 30] Such evidence, however, cannot be used to contradict the plain and ordinary meaning. Phillips, 415 F.3d at 1319-22. H. In both patents, the term "Overlapping patterns." Plaintiffs' Proposed Construction Paths of liquid extending over parts of one another. Phelps Dodge's Proposed Construction The leaching solution disperses from the emitters, percolating downward and outward such that, across the ore bed, the solution from each emitter overlaps solution from the adjacent emitters. [Same as "Overlapping Patterns,"

Claim Element Overlapping patterns

Directly and

[Same as "Overlapping

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Claim Element collectively emitting said leaching solution ... in overlapping patterns into said ore be[d]

Plaintiffs' Proposed Construction Patterns," above]

Phelps Dodge's Proposed Construction above]

The critical distinction between Plaintiffs' and Phelps Dodge's proposed constructions is whether the overlapping pattern is achieved uniformly across the ore bed. Phelps Dodge's construction requires that it does; Plaintiffs' construction does not. Phelps Dodge believes that its construction is required by the phrase "overlapping patterns" itself. Should there be any doubt, however, this construction is definitely called for by the broader claim phrase: "directly and collectively emitting said leaching solution ... in overlapping patterns into said ore be[d]."5 While Plaintiffs may disagree, they have not presented any argument with respect to the broader claim phrase as a whole. Dodge's construction confirmed) by representations Plaintiffs made to the Patent Office during the ex parte reexamination proceedings. Specifically: Plaintiffs told the Patent Office that the overlapping patterns in the patents are "uniform," and that they occur "within ore bed 11," and "throughout the ore bed." [Ex. 11 at 4, 11-12 (emphasis added)] Plaintiffs also distinguished prior art that they claimed would result in "asymmetric" patterns, and another reference that supposedly would result in "a pattern that extends substantially further longitudinally than it does laterally," and "seepage through the ore bed that is not substantially uniform." [Ex. 11 at 4, 15] See, e.g., Gentry Regardless, Plaintiffs' construction is directly contradicted (and conversely Phelps

Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 1477 (Fed. Cir. 1998) ("by distinguishing The `279 patent uses the analogous language "emitting said leaching solution from said emitters directly and collectively into said ore bed ... in overlapping patterns," which should be given the same construction.
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the claimed invention over the prior art, an applicant is indicating what the claims do not cover"). These latest representations to the Patent Office are consistent with those made when the patents were originally prosecuted: In response to rejections, applicant repeatedly informed the Patent Office: "[T]he wetted fronts meet[] relatively close to the surface near the center between two emitters." "[T]he wetting fronts met 4 to 6 inches below the panel surface...." "Less than one percent of the total panel volume was not leached under this arrangement." [Ex. 4, PDA000104; Ex. 15, PDA000320] In response to a rejection for a reference that the Patent Office said would "necessarily" have "some overlap," the applicant distinguished by quoting the `279 patent's claim language regarding "overlapping patterns." [Ex. 4, PDA000393; PDA000399-400] In response to a rejection, the applicant amended and conceded that "overlapping patterns" meant more than just "a generally umbrella-shaped pattern." The Patent Office had rejected all claims because "a generally umbrella-shaped pattern" was "vague and indefinite." In response, the applicant removed the phrase and added the "overlapping patterns" limitation. [Ex. 15, PDA000270; Ex. 4, PDA000274-275] In response to rejections, applicant repeatedly informed the Patent Office: the "system assures more uniform penetration of the entire lift...." [Ex. 4, PDA000091; PDA000143; PDA000298; PDA000307; PDA000435; Ex. 15, PDA000444 (emphasis added)] In response to rejections, the applicant submitted sales literature asserting that there is a "high degree of uniformity of the leaching solution...," with figures showing uniform, symmetrical overlapping patterns across the ore bed. [Ex. 4, PDA000112; Ex. 15, PDA000342]









patterns must be "uniform" "through the heap." [Ex. 13, Jenkins Dep. 118:8-9, 22]

Finally, Plaintiffs' expert witness has likewise testified that the overlapping Plaintiffs' references to the specification and its Figure 2, do not (and cannot)

contradict the representations they made to the Patent Office. On the contrary, the specification requires "the adjacent patterns overlapping as shown" in Figure 2, and the figure clearly shows solution uniformly traveling downward and outward from each emitter to overlap with the solution from the next emitter. [Pls.' Br. 33 (emphasis
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added)] The specification describes the pattern as "umbrella-shaped," i.e., downward and outward. [Id.] In fact, the specification requires "substantially uniform saturation of ore bed 11 with the solution." [`806 patent col.5 ll.8-9 (emphasis added)]

This leads directly to Phelps Dodge's definition, which, like Plaintiffs'

representations to the Patent Office, the specification and its figure, requires that the solution from each emitter percolates downward and outward across the ore bed to overlap the solution from adjacent emitters. [Defs.' Br. 28] Given Plaintiffs' representations, and the clear language in the specification and its In both patents, the term "Predetermined flow rates." Plaintiffs' Proposed Construction The rate of movement of liquid having been selected in advance of installation. Phelps Dodge's Proposed Construction No construction is necessary; this term should be given its plain and ordinary meaning. If construction is required: flow rates that are decided, selected, or set at some point in time. Without explanation, Plaintiffs' opening brief changed their proposed construction [Pls.' Br. 28]

figures, Plaintiffs' proposal must be rejected, and Phelps Dodge's should be adopted. I.

Claim Element Predetermined flow rates

to require that "the rate" be selected "in advance of installation."

Curiously, however, their opening brief does not discuss where this new requirement comes from, referencing it only in a section heading. Plaintiffs' new limitation is not found anywhere in the claims, specification, or prosecution history, and it is not in their reexamination request or their own expert's report. [Ex. 9, Jenkins Rpt. at 15 ¶ 19] Instead their expert testified that the flow rates only had to be determined "[i]n advance of beginning the leaching process." [Ex. 13, Jenkins Dep. 109:20] [Pls.' Br. 28] Regardless,

Likewise, when the applicant added this limitation during

prosecution, in response to rejections, he said nothing redefining the term as Plaintiffs do now. [Ex. 4, PDA000274-275; PDA000398-399; Ex. 15, PDA000389-390]
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meaning of "predetermined flow rates" has not changed either. The claims, specification, and prosecution history do not specify when the flow rates are selected. However, it is clear that once they are selected, they become "predetermined" with respect to any point in the future. The patents do not require more, and no more is needed. J. In the `806 patent, the term "Labyrinth-type flow passage means." Plaintiffs' Proposed Construction Intricate structure of passageways providing for movement of liquid. Phelps Dodge's Proposed Construction A flow passage that reverses direction longitudinally, back and forth, throughout the passage.

Meanwhile, Phelps Dodge's proposed definition has never changed, and the plain

Claim Element Labyrinth-type flow passage means

of "labyrinth-type flow passage."

Without explanation, Plaintiffs' opening brief changed their proposed construction

When the parties submitted their Joint Claim

Construction Statement, Plaintiffs agreed with Phelps Dodge that the term requires that the passages "reverse direction longitudinally, back and forth, throughout the passage." [Corrected Joint Statement 10] [Pls.' Br. 30] definition to "intricate structure of passageways providing for movement of liquid." Plaintiffs' opening brief, however, changed their

In any event, Plaintiffs support their proposed definition by reference to Figure 4 of the patents-in-suit and a figure from an unrelated patent. [Pls.' Br. 31-32] However, this does not change the simple fact that the inventor here expressly defined "labyrinthtype flow passage" as follows: "the liquid leaching solution [flows] through a labyrinth-type flow passage 27 in a conventional manner, i.e., the flow reverses direction longitudinally, back and forth, throughout its travel through the passages."

[`806 patent col.4 ll.32-36; `279 patent col.4 ll.37-41 (emphasis added)] As the patentee can act as his own lexicographer, particularly when he defines the term in the conventional manner, nothing more need be said. Boss Control, Inc. v. Bombardier Inc.,
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410 F.3d 1372, 1376-77 (Fed. Cir. 2005) (holding patentee acted as lexicographer by explanation in specification); see also Phillips, 415 F.3d at 1316 ("the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess. governs"). It is unclear why Plaintiffs are proposing a different definition here. But they cannot be permitted to walk away from the plain definition provided by the specification, which is precisely the same definition proposed by Phelps Dodge. Conclusion For the foregoing reasons, Phelps Dodge respectfully requests that the Court issue an Order construing the claim terms as proposed herein. Dated: June 9, 2006. PERKINS COIE BROWN & BAIN P.A. In such cases, the inventor's lexicography

By s/ C. Mark Kittredge Terry E. Fenzl C. Mark Kittredge 2901 North Central Avenue Post Office Box 400 Phoenix, Arizona 85001-0400 Attorneys for Defendants and Counterclaim Plaintiffs

Case 2:04-cv-00544-PGR

Document 107

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Filed 06/09/2006

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Case 2:04-cv-00544-PGR

CERTIFICATE OF SERVICE I hereby certify tha