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United States Gypsum Co. v. New NGC, Inc.

United States District Court, D. Delaware

September 5, 2018

UNITED STATES GYPSUM COMPANY Plaintiff,
v.
NEW NGC, INC., Defendant. USGC NGC Court USGC NGC Court USGC NGC Court USGC NGC Court USGC NGC Court USGC NGC Court USGC NGC Court USGC NGC Court USGC NGC Court USGC NGC Court Claim Term Recommended Construction

          REPORT AND RECOMMENDATION

          SHERRY R. FALLORK, UNITED STATES MAGISTRATE JUDGE.

         I. INTRODUCTION

         In this patent infringement action filed by plaintiff United States Gypsum Company ("USGC") against defendant New NGC, Inc. ("NGC"), USGC alleges infringement of United States Patent Nos. 6, 342, 284 ("the '284 patent"); 6, 632, 550 ("the '550 patent"); 7, 425, 236 ("the '236 patent"); 7, 758, 980 ("the '980 patent"); 7, 964, 034 ("the '034 patent"); 8, 142, 914 ("the '914 patent"), and 8, 500, 904 ("the '904 patent") (collectively "the patents-in-suit"). (D.I. 1) Presently before the court is the matter of claim construction. This decision sets forth the court's recommendations of constructions for the disputed claim terms discussed in the briefing and at the Markman hearing held on July 18, 2018.

         II. BACKGROUND

         USGC develops and manufactures gypsum products used to construct walls, ceilings, roofs and floors of various types of buildings. (D.I. 1 at ¶ 4) NGC is a direct competitor of USGC in manufacturing, marketing and selling gypsum products. (Id. at ¶ 5)

         The patents-in-suit are a group of related patents with overlapping specifications[1] and common inventors, which are directed to gypsum products with increased resistance to sag, less density, and other improved properties. ('284 patent, col. 3:54-55; col. 5:31-33) During the Markman hearing, counsel categorized the challenged claims into four groups. (7/18/18 Tr. at 5:15-7:1) The composition claims describe the components of a composition used to create a set gypsum product. ('284 patent, claim 1) The product claims of the patents-in-suit involve mixing calcium material with water and various enhancing materials to form a set gypsum product. ('284 patent, claim 10) The method claims involve steps to mix and form the set gypsum. ('236 patent, claim 2) The final category includes product-by-process claims, which recite the gypsum board product made by particular method steps identified in the rest of the claim. ('284 patent, claim 40)

         III. LEGAL STANDARD

         Construing the claims of a patent presents a question of law, although subsidiary fact finding is sometimes necessary. Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 837-38 (2015) (citing Markman v. Westview Instruments, Inc., 52 F.3d 967, 977-78 (Fed. Cir. 1995), aff'd, 517 U.S. 370, 388-90 (1996)). "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. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (internal quotation marks omitted). "[T]here is no magic formula or catechism for conducting claim construction." Id. at 1324. Instead, the court may attach the appropriate weight to appropriate sources "in light of the statutes and policies that inform patent law." Id.

         The words of the claims "are generally given their ordinary and customary meaning," which is "the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application." Phillips, 415 F.3d at 1312-13 (internal citations and quotation marks omitted). "[T]he ordinary meaning of a claim term is its meaning to the ordinary artisan after reading the entire patent." Id. at 1321 (internal quotation marks omitted); see also Eon Corp. IP Holdings v. Silver Spring Networks, Inc., 815 F.3d 1314, 1320 (Fed. Cir. 2016). Claim terms are typically used consistently throughout the patent, and "usage of a term in one claim can often illuminate the meaning of the same term in other claims." Phillips, 415 F.3d at 1314 (observing that "[o]ther claims of the patent in question, both asserted and unasserted, can also be valuable sources of enlightenment.. . [b]ecause claim terms are normally used consistently throughout the patent ...").

         It is likewise true that "[differences among claims can also be a useful guide .... For example, the 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." Id. at 1314-15 (internal citation omitted). This "presumption is especially strong when the limitation in dispute is the only meaningful difference between an independent and dependent claim, and one party is urging that the limitation in the dependent claim should be read into the independent claim." SunRace Roots Enter. Co., Ltd. v. SRAM Corp., 336 F.3d 1298, 1303 (Fed. Cir. 2003) (citing Ecolab Inc. v. Paraclipse, Inc., 285 F.3d 1362, 1375 (Fed. Cir. 2002).

         Other intrinsic evidence, including the patent specification, "is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). "[T]he specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess. In such cases, the inventor's lexicography governs." Phillips, 415 F.3d at 1316 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)). It bears emphasis that "[e]ven when the specification describes only a single embodiment, the claims of the patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using words or expressions of manifest exclusion or restriction." Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (internal quotation marks omitted), aff'd, 481 F.3d 1371 (Fed. Cir. 2007). The specification "is not a substitute for, nor can it be used to rewrite, the chosen claim language." SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).

         In addition to the specification, a court "should also consider the patent's prosecution history, if it is in evidence." Markman, 52 F.3d at 980. The prosecution history, which is also "intrinsic evidence," "consists of the complete record of the proceedings before the PTO [Patent and Trademark Office] and includes the prior art cited during the examination of the patent." Phillips, 415 F.3d at 1317. "[T]he prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be." Id.

         A court also may rely on "extrinsic evidence," which "consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises." Markman, 52 F.3d at 980. For instance, technical dictionaries can assist the court in determining the meaning of a term to those of skill in the relevant art because such dictionaries "endeavor to collect the accepted meanings of terms used in various fields of science and technology." Phillips, 415 F.3d at 1318. In addition, expert testimony can be useful "to ensure that the court's understanding of the technical aspects of the patent is consistent with that of a person of skill in the art, or to establish that a particular term in the patent or the prior art has a particular meaning in the pertinent field." Id. Nonetheless, courts must not lose sight of the fact that "expert reports and testimony [are] generated at the time of and for the purpose of litigation and thus can suffer from bias that is not present in intrinsic evidence." Id. ("[C]onclusory, unsupported assertions by experts as to the definition of a claim term are not useful to a court."). Overall, while extrinsic evidence may be useful to the court, it is less reliable than intrinsic evidence, and its consideration "is unlikely to result in a reliable interpretation of patent claim scope unless considered in the context of the intrinsic evidence." Id. at 1318-19.

         Finally, "[t]he 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." Renishaw PLC v. Marposs Societa' Per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). It follows that "a claim interpretation that would exclude the inventor's device is rarely the correct interpretation." Osram GmbH v. Int'l Trade Comm'n, 505 F.3d 1351, 1358 (Fed. Cir. 2007).

         IV. CONSTRUCTION OF DISPUTED TERMS

         1. "set gypsum" ('284 patent, claims 4, 5, 6, 12, 26, 29, 32, 33, 34, 40; '550 patent claims 1, 54, 55; '236 patent, claim 2; '980 patent, claims 1, 6, 7; '914 patent, claim 1; '034 patent, claims 1, 8; '904 patent, claims 1, 15)

USGC
NGC
Court

a crystallized gypsum structure produced from the rehydration of calcium sulfate hemihydrate into calcium sulfate dihydrate by mixing with water

calcium sulfate dihydrate

calcium sulfate dihydrate

         I recommend that the court adopt NGC's construction, which is supported by the intrinsic evidence. The specifications of the patents-in-suit expressly define "set gypsum" as "calcium sulfate dihydrate," providing that "[m]any well known useful products contain set gypsum (calcium sulfate dihydrate) as a significant, and often as the major, component," and explaining that "the terms, 'set gypsum' and 'hydrated gypsum,' are intended to mean calcium sulfate dihydrate."[2] ('284 patent, col. 1:42-44; col. 4:33-34; see also col. 7:53-54; 12:65-67; 13:65-67) "When the specification explains and defines a term used in the claims, without ambiguity or incompleteness, there is no need to search further for the meaning of the term." Sinorgchem Co., Shandong v. Int'l Trade Comm'n, 511 F.3d 1132, 1138 (Fed. Cir. 2007) (quoting Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1478 (Fed. Cir. 1998)). Viewing the specifications of the patents-in-suit as "the single best guide to the meaning of [the] disputed term," I recommend that the court construe "set gypsum" to mean "calcium sulfate dihydrate." Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).

         2. "set gypsum-containing product," "set gypsum product," and "set gypsum material" ('550 patent, claims 1, 54, 55; '034 patent, claims 1, 7-8; '904 patent, claims 1-4, 6, 8, 11-13, 15, 18; '236 patent, claim 2)

USGC
NGC
Court

No construction necessary apart from the term "set gypsum"

If construed: a product containing set gypsum

a product containing calcium sulfate dihydrate, including but not limited to gypsum boards, reinforced gypsum composite boards, plasters, machinable materials, joint treatment materials, and acoustical tiles

No construction necessary apart from the term "set gypsum"

         I recommend that the court adopt USGC's proposal and decline to construe the terms apart from the preceding construction of "set gypsum." In support of its proposed construction, NGC stresses that its non-limiting list of products finds support in the specifications of the patents-in-suit and prevents USGC from improperly distinguishing the prior art in a manner inconsistent with the patentee's definition of "set gypsum." (D.I. 74 at 4-5) USGC contends that NGC's proposed list of examples does not resolve any ambiguity in the claim term. (D.I. 77 at 14-15)

         The disputed terms require no further construction. The recommended construction for "set gypsum" is consistent with NGC's proposal to define the term as "a product containing calcium sulfate dihydrate." The parties do not dispute that the non-limiting list of examples included in NGC's proposed construction is consistent with the specifications of the patents-in-suit. ('284 patent, col. 1:11-16; 1:42-61) However, NGC does not explain how this open-ended list clarifies the scope of the term. For these reasons, I recommend that no construction is necessary for the disputed terms.

         3. "calcined gypsum" ('284 patent, claims 10, 11; '550 patent, claims 1-3, 7, 8, 54, 55; '236 patent, claim 2; '980 patent, claims 1, 2; '914 patent, claims 1-3; '034 patent, claims 1, 2, 4, 7)

USGC
NGC
Court

alpha calcium sulfate hemihydrate, beta calcium sulfate hemihydrate, water-soluble calcium sulfate anhydrite, or mixtures of any or all thereof

calcium sulfate hemihydrate and/or calcium sulfate anhydrite

alpha calcium sulfate hemihydrate, beta calcium sulfate hemihydrate, water-soluble calcium sulfate anhydrite, or mixtures of any or all thereof


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