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Forta Corp. v. Surface-Tech, LLC

United States District Court, W.D. Pennsylvania

June 11, 2015



Nora Barry Fischer United States District Judge


A Markman Hearing to construe the disputed terms of U.S. Patent Nos. 8, 114, 514 (the “’514 Patent”) and 8, 142, 889 (the “’889 Patent”) (collectively, the “Patents-in-Suit”) was held on November 12, 2014, with Special Master John W. McIlvaine, III, Esq. presiding. (Docket No. 85). During same, the Defendants objected to certain of Plaintiff’s expert’s testimony. (Id.). As such, the Court permitted Defendants to file written objections following a review of the transcript of the day’s proceedings. (Docket No. 86). Defendants filed written objections, in the form of a Motion to Strike. (Docket No. 89). Special Master McIlvaine issued a Report and Recommendation as to said Motion, (Docket No. 94), which the Court adopted, (Docket No. 97). After Defendants filed a supplemental expert report, (Docket No. 100), the Special Master filed his Report and Recommendation on Claim Construction (the “R&R”), (Docket No. 101). Both parties objected to the R&R, (Docket Nos. 105, 106), and both responded to the other’s objections, (Docket Nos. 108, 109). Leave for reply briefing was neither requested nor granted. As such, this matter is now ripe for the Court’s disposition.


A District Court reviews a Special Master’s Report and Recommendation de novo. Fed.R.Civ.P. 53(f).


In the R&R, Special Master McIlvaine recommends constructions of the seventeen claim terms in dispute. (Docket No. 101 at 1–3). The Court addresses the parties’ arguments seriatim.

a. Indefiniteness

Initially, Defendants assert that Special Master McIlvaine erred in failing to address their indefiniteness arguments in his R&R. (Docket No. 105 at 2 (Quoting R&R at 14)). Specifically, Special Master McIlvaine reasoned that, because the Supreme Court’s decision in Nautilus, Inc. v. Biosig Instr., Inc., 572 U.S. ---, 134 S.Ct. 2120 (2104), held that indefiniteness can be found with less than a showing of insoluble ambiguity or unamenability to construction, construing a claim term at this point does not preclude a later finding of indefiniteness. (R&R at 13–14). Defendants cite a plethora of cases, both before and after Nautilus, where various district courts found invalidity at the claim construction stage. (Docket No. 105 at 3–4).

In response, Plaintiff argues that none of the cases Defendants cite requires a district court assess indefiniteness contentions at this stage. (Docket No. 108 at 4). Plaintiff also cites several post-Nautilus cases wherein the district court deferred deciding indefiniteness arguments until the summary judgment stage. (Id.). Of note is Indus. Tech. Research Inst. v. LG Elec., Inc., Civ. No. 13-2016, 2014 WL 6907449 (S.D. Cal. Dec. 8, 2014), reaffirming a prior district court’s reasoning that “the Federal Circuit’s statements that indefiniteness is intertwined with claim construction mean only that the Court must attempt to determine what a claim means before it can determine whether the claim is invalid for indefiniteness, and not that the Court must determine indefiniteness during the claim construction proceedings.” Id. at *2 (quoting ASM Am., Inc. v. Genus, Inc., Civ. No. 01-2190, 2002 WL 1892200, at *2 (N.D. Cal. Aug. 15, 2002).

If a claim term is insolubly ambiguous or not amenable to construction, then a court would be able, if not obligated, to so decide at the claim construction phase. Cf. Purdue Pharm. Prods., L.P. v. Actavis Elizabeth, LLC, 2014 WL 2624787 at *6 (D.N.J. June 11, 2014) (citing Cacace v. Meyer Mktg. (Macau Commercial Offshore) Co., 812 F.Supp.2d 547, 561 (S.D.N.Y. 2011)) Since Nautilus held that a lesser standard must be met to show indefiniteness, it stands to reason that a court may construe a claim term and then later determine that the patent’s “claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, 134 S.Ct. at 2124.

The Special Master recommended constructions for all disputed claim terms. (R&R, passim). The Court similarly does not find any of the disputed claim terms unamenable to construction. Accordingly, Defendants’ objections[1] to the Special Master’s recommendations regarding indefiniteness are overruled, as the Court agrees that said issue is more appropriately addressed at the summary judgment stage in this case. See Purdue Pharm. Prods., L.P., 2014 WL 2624787 at *6 (citing Cacace, 812 F.Supp.2d at 561).

b. Term #1 “outer container”

Special Master McIlvaine recommends construing “outer container” as: “an ‘outer container’ is a receptacle used to hold the ‘core.’ An ‘outer container’ is separate from and cannot be integral with the contained objects.” (Docket No. 101 at 1).

Plaintiff “has no objection to the first sentence of [the Special Master’s] recommended construction but believes that the general principles of claim construction do not support the inclusion of the second sentence in the final construction of this term.” (Docket No. 107). Specifically, Plaintiff asserts that the prosecution history the Special Master cites to support his second sentence does not provide an adequate basis to support same. (Id. at 4). To that end, Plaintiff notes the following. In response to a rejection over U.S. Patent No. 7, 168, 232 (“Lovett”), Plaintiff added “outer” to modify “container.” (Id.). In the “Remarks” of this amendment, Plaintiff argued that “[t]here is nothing in Lovett to teach or suggest a core including the plurality of fiber strands twisted together and an outer container having the twisted fiber contained therein.” (Id.). It now asserts that “the term ‘outer’ was recited in amended claim 12 to convey the presence of a receptacle to contain the fibers, i.e., a core of fibers, as opposed to the fibers being manipulated in a twisted configuration to hold themselves (i.e., in the absence of an outer container).” (Id. at 4–5). This, according to Plaintiff does not “suggest[] that the core of fibers is separate from and cannot be integral with the outer container.” (Id. at 5). Rather, Plaintiff contends, “at most, [it] disclaimed embodiments wherein the fibers themselves were merely configured into a shape to hold together, in the absence of a container element.” (Id. at 6).

Plaintiff further points to the specification, which states that “[t]he outer container of the asphalt reinforcement composition of the present invention encompasses and contains or holds the core.” (Id. (citing Docket No. 75-2 at 7)). Based on this language, and the fact that there is no support in the specification to require that the “outer container” be “separate from and not integral with” the contents, Plaintiff argues that the second sentence of the Special Master’s recommendation should be excised. (Id.).

Finally, Plaintiff argues that the second sentence of the recommended construction is “indefinite, such that the term remains subject to multiple interpretations.” (Id. at 6). Plaintiff specifically faults inclusion of the word “integral, ” to which the Special Master did not ascribe a specific meaning, and which is a word with multiple common meanings. (Id.).

Defendants once again object to Special Master McIlvaine’s refusal to address indefiniteness at this juncture. (Docket No. 105 at 2). However, “[i]f the term ‘outer container’ is held to satisfy the ‘definiteness’ requirement, Defendants[] do not object to the construction of this claim phrase in the [R&R].” (Id.).

Defendants argue that Plaintiff’s position that the second sentence of the recommended construction is not supported by the record is untenable “[b]ecause a ‘container’ can be a ‘receptacle’ for holding a ‘core’ [and] without the qualifying term ‘outer, ’ the term would be superfluous.” (Docket No. 109 at 3–4). They argue that Plaintiff “was only able to distinguish its claims from Lovett by adding the term ‘outer, ’ which must be construed as surrendering at least some scope of subject matter.” (Id. at 4 (citing R&R at 15)). According to Defendants, “[s]ince Lovett’s ‘container’ is integral with its ‘core, ’ the Special Master correctly determined that the ‘outer container is separate from and cannot be integral with the contained objects.’” (Id. (citing R&R at 15–16)).

Defendants also contend that Plaintiff’s indefiniteness argument fails because “the [R&R] is specific to the context in which ‘cannot be integral with, ’ should be used.” (Id.). In particular, they maintain, “this term sought to distinguish ‘embodiments wherein, as in Lovett, the container blends into – or in and out of – the core that it contains.” (Id.). They then assert that “[t]o the extent that there are [] indefiniteness issues, Defendants[] respectfully submit that it is due to the [Plaintiff’s] lack of a drawing or any description in the Patents-in-Suit of the physical embodiment of an ‘outer container.’”[2] (Id. at n.1).

Initially, the Court finds that “outer container” is amenable to construction. Therefore, as discussed, supra, Defendants’ indefiniteness objection as to this term is overruled. The Court will address indefiniteness at summary judgment. Further, as there is no objection ...

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