The opinion of the court was delivered by: ROBERTSON
Kamyr Inc., now Ahlstrom Machinery, Inc. ("AMI") sued Jean Marie Clement for a declaratory judgment that two waste paper recycling plants it had built did not infringe Clement's process patent 4,780,179 (the "'179 patent"). Clement counterclaimed for infringement. Summary judgment was entered in. Kamyr's favor on January 31, 1997, 952 F. Supp. 12, and Clement appealed. On January 12, 1998, the United States Court of Appeals for the Federal Circuit reversed and remanded with directions (1998 U.S. App. LEXIS 418, No. 97-1262, 1998 WL 15223 at *1). On remand, AMI renewed the motion for summary judgment. By agreement of the parties, oral argument on that motion and a Markman hearing were held together on July 2, 1998.
AMI contends that the process used in the two plants it designed and built do not infringe the '179 patent for all (or any) of the following reasons: because the initial step of the AMI process is performed at temperatures well above the "room temperature" specified by the '179 patent (Step A); because the AMI process cleans and screens downstream from the disperser, unlike the '179 patent process, which removes "substantially all" non-ink contaminants before dispersal (Step B); because the AMI process applies only the mechanical energy of an MDR (R) frotopulper and does not apply the '179 patent's "simultaneous actions" of high temperature, intense mechanical energy, and a chemical agent (Steps C and D); and because pulp residence times in the AMI process are not within the 2- to 10- minute range specified by the '179 patent (Step E).
I am instructed on this remand (1) to construe each of the patent claims with respect to these steps, (2) to determine whether Clement's allegations of literal infringement are viable, and (3) to analyze AMI's assertions of prosecution history in light of Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 117 S. Ct. 1040, 137 L. Ed. 2d 146 (1997) ("Hilton II"). If all of Clement's claims survive this process, then a jury must decide whether the AMI process infringes the '179 patent, either literally or because the "function, way and result" of the AMI process are essentially the same as those of the '179 patent. See Markman v. Westview Instruments, 517 U.S. 370, 384, 134 L. Ed. 2d 577, 116 S. Ct. 1384 (1996) ("Markman II").
In compliance with the direction of the Court of Appeals, I have construed each of the four claims, determined whether (and explained why) each one was literally infringed or not, and analyzed the prosecution history estoppel issues in light of Hilton II and Hilton III. I have concluded, for the reasons set forth below, that plaintiff's renewed motion for summary judgment must be granted. Clement's claims of infringement with regard to step A and Step E of the '179 patent are barred as a matter of law.
Step A -- "room temperature"
A patent claim is to be construed as it would be understood by a person of ordinary skill in the art at the time of the invention. Markman I, 52 F.3d 967 at 986. The construing court must look first to "intrinsic evidence," Vitronics Corp. v. Conceptronic Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996) comprising the specification, claims, drawings, and file history, Markman I, 52 F.3d at 979. "Extrinsic evidence" should not be used unless intrinsic evidence alone is insufficient to resolve ambiguity, and is to be used in any event only to assist the trial court's understanding of the patent, and not to vary or contradict the terms of the claims. Vitronics, 90 F.3d at 1583-1584.
The '179 patent does not explicitly define the term "room temperature." AMI asserts on the basis of a dictionary definition that "room temperature" is a technical term with a precise meaning of 20 [degrees] - 25 [degrees] C (68 [degrees] - 77 [degrees] F). Pltf. Mot. at 17-18, Tr. at 20. Clement asserts on the basis of an expert's declaration that "room temperature" is "approximately . . . the range of temperatures found in a pulping room but below the melting point of the 'stickies'."
Def. Opp'n. at 39; Forester Decl. at P10.
The specification, claims, drawings and file history of the '179 patent contain no probative intrinsic evidence as to the meaning of "room temperature." It is true, as Clement asserts, that the claim specification does not specify a hard numerical range, instructing only that pulping be accomplished at temperatures below the melting point of the non-ink contaminants. But Clement has cited no doctrine providing that a claim limitation is to be construed by the broadest terms in its specifications.
Nor does the prosecution history support Clement's argument that "room temperature" should be construed to include temperatures as high as 45 [degrees] C (113 [degrees] F).
The argument is that (a) during the prosecution of the '179 patent, Clement described Ortner's process as performing at room temperature; (b) there is evidence that Ortner's process operates at 45 [degrees] C (113 [degrees] F); and therefore (c) "room temperature" includes 45 [degrees] C (113 [degrees] F). Def. Opp'n. at 41; Tr. at 49-50 (Citing Ex. 2-64, 2-112). That syllogism, of course, is faulty. Clement was attempting to distinguish his process from Ortner. See text accompanying note 3, infra. Moreover, he does not allege that his description of Ortner's process was accepted or even considered by an examiner or a court. His characterization of a process of prior art as occurring at "room temperature" cannot be allowed to define the term.
The extrinsic evidence is not powerful either. The only expert testimony is the declaration of Mr. Forester. The court has broad discretion to use expert testimony, Markman I, 52 F.3d at 983, but may not use it to contradict or vary terms that have been unambiguously defined by the intrinsic evidence. Id. at 981. Mr. Forester's declaration does not establish the ordinary meaning of the term "room temperature" to one skilled in the art. See Hoechst Celanese Corp. v. BP Chemicals Ltd., 78 F.3d 1575, 1578 (Fed. Cir. 1996). Indeed, Mr. Forester states that he is not aware of any "specific technical meaning in the pulping and paper industry." His own view that the term means the temperature of the room in which pulping or de-inking occurs, Forester Decl. at P10, is not persuasive. See Southwall Tech. Inc. v. Cardinal IG Co., 54 F.3d 1570, 1577 (Fed. Cir. 1995).
Dictionary definitions are usually considered "extrinsic evidence"; judges may rely on them when construing claim terms, "so long as the dictionary definition does not contradict any definition found in or ascertained by a reading of the patent documents." Vitronics, 90 F.3d at 1584 n.6; see also, Universal Oil Products Co. v. Globe Oil & Refining Co., 40 F. Supp. 575, 582 (N.D. Ill. 1941). AMI's dictionary definition is the best of the weak evidence in this record as to the meaning of "room temperature." Clement asserts that AMI's citation to a chemical dictionary is inappropriate because the '179 patent is industrial rather than chemical, Def. Opp'n. at 40; Tr. at 46, but Clement presents no alternative dictionary definition (industrial or otherwise) that more suitably interprets the '179 patent.
The term "room temperature" is construed to mean 20 [degrees] - 25 [degrees] C (68 [degrees] - 77 [degrees] F).
Clement does not allege that either of the AMI-built facilities uses a Step A temperature within the range of 20 [degrees] - 25 [degrees] C. There is no genuine issue of material fact as to whether or not AMI's process operates at a temperature of less than 25 [degrees] C. The lowest temperature calculated at either AMI plant was 33 [degrees] C (93 ...