Kadant Johnson, Inc. v. D'Amico

• Decision Date: 23 February 2012
• Docket Number: CIVIL ACTION NO. 10-2869
• Parties: KADANT JOHNSON, INC. v. JOSEPH v. D'AMICO, LOUISIANA STEAM EQUIPMENT, LLC and UTILITIES OPTIMIZATION GROUP, LLC
• Court: U.S. District Court — Eastern District of Louisiana

KADANT JOHNSON, INC. v. JOSEPH v. D'AMICO, LOUISIANA STEAM EQUIPMENT, LLC and UTILITIES OPTIMIZATION GROUP, LLC

CIVIL ACTION NO. 10-2869

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF LOUISIANA SECTION "C" (2)

Dated: February 23, 2012

Pertains only to 11-36

ORDER & REASONS

On October 5, 2011, the Court held a claim construction hearing to define the claims of U.S. Patent No. 5,098,135 ('135) entitled "Rotary Joint With Axial Compensation"("rotary joint" or "'135 Patent") pursuant to Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995). Based on arguments and evidence presented at the hearing, the memoranda of the parties, the facts, and the record in this case, the Court finds the definitions of the claims at issue as follows.

I. BACKGROUND

A. Procedural History

As stated in the Court's January 9, 2012 Order, this case comprises claims from two consolidated lawsuits. On June 21, 2010, Plaintiff filed his first suit in Alabama state court against Joseph V. D'Amico ("D'Amico"), Louisiana Steam Equipment, LLC ("LSE"), Utilities Optimization Group ("UO Group"), and affiliated companies, alleging breach of contract. (Rec. Doc. 1-8). The case was removed on the basis of diversity jurisdiction, 28 U.S.C. § 1332, to theMiddle District of Alabama on July 6, 2010. (Rec. Doc. 1-2). The suit was transferred to this Court and captioned 10-2869. (Rec. Doc. 5). On September 8, 2010, Defendants filed a Counterclaim demanding declaratory judgment concerning portions of the four contracts Defendants entered into with Plaintiff between 1993 and 2006. (Rec. Doc. 3). Defendants filed an amended counterclaim, adding claims for unfair trade practices, defamation, and interference with a contract under various state laws. (Rec. Doc. 75).

On September 30, 2010, Plaintiff filed his second suit in the Eastern District of Michigan against LSE, LSE Systems, Inc. ("LSE Systems"), Utility Construction Group, Inc. ("UCG"), and UO Group, alleging infringement of Plaintiff's '135 Patent under 35 U.S.C. § 271(a) and (c). (Case No. 11-36, Rec. Doc. 1). The Court has original jurisdiction over this case pursuant to 28 U.S.C. § 1338(a). The suit was transferred to this Court and captioned 11-36. (Case No. 11-36, Rec. Doc. 28). On January 18, 2011, the two suits were consolidated. (Rec. Doc. 34). The determinations in this Order refer only to the patent infringement suit, Case No. 11-36.

B. Patent and Specific Claims at Issue

The parties do not dispute the following facts concerning the general role of a rotary joint like the '135 Patent as a component of a paper-making machine. Paper is made by conveying a mixture of cellulose fibers, water, and other chemicals over a series of rotating drums that are heated with steam. Water in the mixture evaporates as the mixture moves from drum to drum. This process turns the mixture into paper by the time it reaches the end of the manufacturing line. The steam that heats the drums enters via rotary joints that are placed on each side of the drum. Rotary joints allow the drum to rotate while passing liquid, which becomes steam, into and out of the drums. As the drums heat up, they expand; as they cool, they contract. This lateral, or axial, movement creates the potential for leakage of the drums, which creates difficulties in the paper-making process. The '135rotary joint represents a solution to this challenge in that, as Plaintiff's counsel explained at the Markman hearing and Defendants do not dispute, it "handles the pressure and the steam and the water that's flowing in and out without leaking." (10/5/11 Tr. at 6).

The '135 Patent contains 12 claims. (Rec. Doc. 113, Ex. A at 6). The relevant claims for defining the five terms at issue, indicated in boldface type, are as follows:

1. A rotary joint for a rotating drum having a journal having an axis of rotation characterized by its ability to accommodate axial expansion comprising, in combination, an annular mounting flange having an axis and a central passage, fastening means defined on said flange for coaxially attaching said flange to the drum journal, an annular wear plate having a central passage having an axis coaxially mounted on said flange, a seal surface defined on said wear plate concentric to said plate axis, an elongated housing having an internal chamber having a longitudinal axis, said housing having a port for communicating with a fluid conduit fitting, support means supporting said housing substantially coaxial with the journal axis of rotation, a cylindrical nipple partially within said housing chamber having a longitudinal axis coaxial with said chamber axis, said nipple being axially displaceable within said chamber, annular first sealing means interposed between said nipple and said housing whereby said nipple is sealed with respect to said housing at all axial nipple positions within said chamber, and second sealing means interposed between said nipple and said wear plate.

6. In a rotary joint as in claim 1, said housing having a first end disposed toward said wear plate, an annular end cap mounted upon said housing first end, said first sealing means being mounted on said end cap.

(Rec. Doc. 113, Ex. A at 6) (emphasis added).

II. LAW & ANALYSIS

A. Applicable Law

A United States patent enjoys a presumption of validity. 35 U.S.C. § 282. Validity of a current patent lasts until a challenger carries its burden of persuading a court that the patent can no longer be accepted as valid. Monsanto Co. v. Scruggs, 342 F. Supp. 2d 584, 600 (N.D. Miss. 2004), citing Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1534 (Fed. Cir. 1983). The challenger must do so by clear and convincing evidence. Monsanto, 342 F. Supp. 2d at 600 (citing Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861, 872 (Fed. Cir. 1985) (overruled on other grounds). If the challengercannot meet that burden, the court need only so state; it need not validate the patent at issue. Monsanto, 342 F. Supp. 2d at 600.

"The limits of a patent must be known for the protection of the patentee, the encouragement of the inventive genius of others and the assurance that the subject of the patent will be dedicated ultimately to the public." General Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 369 (1938). This is to prevent a "zone of uncertainty which . . . would discourage invention." United Carbon Co. v. Binny & Smith Co., 317 U.S. 228, 236 (1942).

Whether a patent has been infringed is determined through a two-step analysis. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc) ("'[A] patent covers the invention or inventions which the court, in construing its provisions, decides that it describes and claims.'") (quoting 3 William C. Robinson, The Law of Patents for Useful Inventions § 1091, 247 (1890)), aff'd, 517 U.S. 370 (1996). First, the claims of the patent at issue must be construed to determine their meaning and scope; second, the claims must be compared to the allegedly infringing device. Markman, 52 F.3d at 976 (citing Read Corp. v. Portec, Inc., 970 F.2d 816 (Fed. Cir. 1992)). At this stage in the case, the Court is concerned only with the claim construction step in the infringement analysis. Accordingly, the allegedly infringing device will be considered only insofar as it provides meaningful context. The Court notes that the second step of a patent infringement analysis is a question of fact. See DeMarini Sports, Inc. v. Worth, Inc., 239 F.3d 1314, 1322 (Fed. Cir. 2001).

Claim construction, however, is a question of law to be decided by the Court. Markman, 52 F.3d 967, 977 (Fed. Cir. 1995) (en banc) aff'd, 517 U.S. 370. The meaning of some claim terms is sometimes "readily apparent even to lay judges," in which case claim construction "involves little more than the application of the widely accepted meaning of commonly understood words." SeePhillips v. AWH Corp. (Phillips II), 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc). However, the meaning of a claim term is frequently not apparent. Phillips, 415 F.3d at 1314. Even if a term's meaning seems immediately apparent, persons skilled in the art often use those terms "idiosyncratically," and thus the layman's definition is incorrect or imprecise. Phillips, 415 F.3d at 1314. Thus, in most cases, claims are construed from the perspective of a person of ordinary skill in the field of the invention. See Phillips, 415 F.3d at 1312-1312. Generally, both technical terms and common language contained in a patent claim will be interpreted as having the meaning that a person "experienced in the field of the invention" would understand it to have. Hoechst Celanese Corp. v. B.P. Chems. Ltd., 78 F.3d 1575, 1578 (Fed. Cir. 1996). Further, the meaning of the term is limited to what its meaning would have been as of the effective filing date of the application. Phillips, 415 F.3d at 1313 (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004). "[T]he person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification." Phillips, 415 F.3d at 1313.

To properly construe a claim, the Court looks first at the intrinsic evidence of the patent record, which includes the claim language itself, the specification, and the relevant prosecution history. See Alza Corp. V. Mylan Laboratories, Inc., 391 F.3d 1365, 1370 (Fed. Cir. 2004) (citing Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001). Courts must also look to other claims to interpret a disputed claim. Fonar Corp. v. Johnson & Johnson, 821 F.2d 627, 631 (Fed. Cir. 1987), cert. denied, 484 U.S. 1027 (1988) (overruled on other grounds by Cardinal Chemical Co. v. Morton Intern., Inc., 508 U.S. 83 (1993)). Under 35 U.S.C. § 112 ("specification statute"), the specification is composed of both a written...