Deerpoint Group, Inc. v. Agrigenix, LLC ( 2022 )

Case 1:18-cv-00536-AWI-BAM Document 163 Filed 01/03/22 Page 1 of 34 1 2 3 UNITED STATES DISTRICT COURT 4 EASTERN DISTRICT OF CALIFORNIA 5 6 DEERPOINT GROUP, INC., CASE NO. 1:18-CV-0536 AWI BAM 7 Plaintiff ORDER REGARDING CLAIMS 8 v. CONSTRUCTION 9 AGRIGENIX, LLC, SEAN MAHONEY, and CUSTOM AG FORMULATORS, 10 INC., 11 Defendants 12 13 This is a business dispute involving intellectual property and trade secrets between 14 Plaintiff Deerpoint Group, Inc. (“Deerpoint”) and Defendants Agrigenix, LLC (“Agrigenix”), 15 Sean Mahoney (“Mahoney”), and Custom Ag Formulators, Inc. (“Custom Ag”) (collectively 16 “Defendants”). Currently pending before the Court is a claims construction matter. Deerpoint and 17 Custom Ag have submitted extensive briefing regarding the meaning of 10 terms within Patent 18 No. 9,856,179 filed January 2, 2018 (“the ‘179 Patent”). Defendants Agrigenix and Mahoney 19 have limited their participation to the joint pre-hearing statement (Doc. No. 129) and have 20 submitted no additional briefing or expert opinions. 1 The parties have agreed on the meaning of 21 three of the terms, but dispute the meaning of the remaining seven. The Court took the matter 22 under submission without holding a hearing. The Court now issues this order which construes the 23 10 terms at issue in the ‘179 Patent. 24 1 The briefing associated with the claims construction issue is unusual. All parties submitted a joint statement that 25 included agreed terms and disputed terms. The disputed terms had two constructions offered, one by Deerpoint and one by all Defendants. However, when individual trial briefs were submitted, Agrigenix and Mahoney did not submit 26 anything further. On the other hand, Custom Ag submitted their own separate briefing in which they kept one of the previously proposed constructions in the joint statement, but offered amended constructions of the remaining six 27 terms. Custom Ag’s briefing was solely on their own behalf, and there was no indication that Agrigenix and Mahoney agreed with any of Custom Ag’s amended constructions. Given the sta te of the claims construction briefing with 28 respect to disputed terms, the Court views the parties as offering (generally) three proposed constructions: one by Deerpoint, one by Custom Ag, and one by Agrigenix and Mahoney. Case 1:18-cv-00536-AWI-BAM Document 163 Filed 01/03/22 Page 2 of 34 1 GENERAL BACKGROUND 2 Deerpoint owns the ‘179 Patent. The ‘179 Patent is entitled “Method and Composition of 3 Agricultural Potassium-Plus Fertigation.” Fertigation refers to methods of adding fertilizers to 4 irrigation water for crops. 5 The “Abstract” of the ‘179 Patent reads: 6 An agricultural potassium-fertigation method for emitter-irrigation potassium-plus fertigation feeds a potassium-plus nutrient feedstock comprised of potassium 7 formate and additional yield-assist constituent(s) and water to an active emitter- irrigation system discontinuously, at levels of 0.15 to 50 gal./min, during one to six 8 nonconsecutive irrigation days. 9 ‘179 Patent - Abstract.2 In the Summary section, the ‘179 Patent provides in relevant part: 10 The present invention provides a method of discontinuous emitter-irrigation potassium-plus fertigation (“discontinuous potassium-plus fertigation”) wherein a 11 potassium-plus nutrient feedstock comprised of potassium formate, at least one non-potassium-formate constituent that is beneficial to the crop’s nutrient-uptake 12 and/or soil condition (“additional yield-assist constituent”), which preferably is a macro-nutrient, and water is charged to an active emitter-irrigation system to form 13 treated irrigation water, wherein the potassium-plus nutrient feedstock has a high potassium-nutrient content, has a high organic carbon content, has a minimal 14 amount of water, has no or negligible essential yield -extraneous constituent such as sulfate, has no essential yield-adverse constituent such as degradable thiosulfate, 15 phosphate when fed under phosphate-precipitation conditions or chloride and has no constituent that could aggravate the plugging potential of treated irrigation 16 water. 17 Id. at (Summary) col. 3 ll. 21-38; see also ‘179 Patent col. 4 ll.6-27. The ‘179 Patent has 20 18 claims. See id. Two of these claims are alleged to have been infringed, Claims 14 and 16. 19 Claim 14 reads: 20 A treated irrigation water comprising a potassium-plus nutrient feedstock and irrigation water, wherein said potassium-plus nutrient feedstock is comprised of 21 from 10 to 50 wt. percent potassium formate and from 1 to 35 wt. percent additional yield-assist constituent(s). 22 Id. at col. 12 ll. 27-31. 23 Claim 16 reads: 24 The treated irrigation water according to claim 14 wherein from 90 to 100 weight 25 percent of said additional yield-assist constituent(s) are selected from the group consisting of N (as N), P (as P2O5), acid and combinations thereof. 26 Id. at col. 12 ll. 37-41. 27 28 2 The ‘179 Patent is Exhibit A to Custom Ag’s opening brief and Exhibit 1 to Deerpoint’s opening briefing. 2 Case 1:18-cv-00536-AWI-BAM Document 163 Filed 01/03/22 Page 3 of 34 1 In the fertilizer industry, fertilizers are classified by their “NPK” numbers – N is the 2 amount of nitrogen expressed in terms of nitrogen, P is the amount of phosphorous expressed in 3 terms of P205 (phosphorous pentoxide), and K is the amount of potassium expressed in terms of 4 K2O (potassium oxide). Nitrogen, phosphorous, and potassium are the three primary plant 5 nutrients and may be provided through many different source compounds. See Krauter 2d Dec. ¶ 6 12. Because the sources of these three primary nutrients can vary widely, the nutrients are 7 expressed in a uniform manner by reference to the equivalent amounts of potassium in K2O and 8 phosphorus in P205. See id. & ¶ 14. To determine the actual amount of the nutrients, one 9 multiplies the listed amount of phosphorus by 0.44 (the molecular weight of phosphorus in P2O5) 10 and the listed amount of potassium by 0.83 (the molecular weight of potassium in K2O). See 11 Maitra 1st Dec. ¶ 44. While expressing the total amount of nitrogen, phosphorous, and potassium 12 through the N-P-K convention, fertilizer labels also identify other nutrients and include a 13 derivation section that identifies the actual source compound/substance of nitrogen, phosphorous, 14 potassium, and other nutrients. See Kleinman 1st Dec. Exs. 5,7; see also Krauter 2d Dec. ¶ 17. 15 The ‘179 Patent contains seven examples of potassium-plus nutrient feedstocks and includes NPK 16 values for the seven exemplars. See Table 1 of the ‘179 Patent. 17 18 CLAIMS CONSTRUCTION FRAMEWORK 19 Claim construction is a matter of law. UCB, Inc. v. Yeda Research & Dev. Co., 837 F.3d 20 1256, 1259 (Fed. Cir. 2016). “Claim construction seeks to ascribe the meaning to a claim term as 21 understood by a person of ordinary skill in the art at the time of invention.” Iridescent Networks, 22 Inc. v. AT&T Mobility, LLC, 933 F.3d 1345, 1350 (9th Cir. 2019). 23 In construing claims, courts look first to, and primarily rely on, the intrinsic evidence, 24 which includes the claims themselves, the specification, and the prosecution history of the patent. 25 Personalized Media Communs., LLC v. Apple, Inc., 952 F.3d 1336, 1340 (9th Cir. 2020). First, 26 claim construction begins with words of the claims themselves. Endo Pharms., Inc. v. Actavis 27 LLC, 922 F.3d 1365, 1370 (Fed. Cir. 2019). The starting point is how a person of ordinary skill in 28 the art (“POSITA”) would understand a claim term at the time of patent application because 3 Case 1:18-cv-00536-AWI-BAM Document 163 Filed 01/03/22 Page 4 of 34 1 inventors are typically skilled in the field of invention and patents are addressed to and intended to 2 be read by others of skill in the pertinent art. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. 3 Cir. 2005) (en banc). A person of ordinary skill in the art reads a claim term in the context of not 4 only the particular claim in which it appears, but also in the context of the entire patent, including 5 the specification. Allergan Sales, LLC v. Sandoz, Inc., 935 F.3d 1370, 1373 (Fed. Cir. 2019). 6 Claim terms are to be construed consistently throughout a patent. Phil-Insul Corp. v. Airlite 7 Plastics Co., 854 F.3d 1344, 1359 (Fed. Cir. 2017). Second, the “specification” includes both the 8 written description and the claims of the patent. Cisco Sys., Inc. v. TQ Delta, LLC, 928 F.3d 9 1359, 1362 (Fed. Cir. 2019). Because a patent is a fully integrated instrument that consists 10 principally of a specification that concludes with the claims, the claims must be read in view of the 11 specification. Continental Circuits LLC v. Intel Corp., 915 F.3d 788, 796 (Fed. Cir. 2019). Thus, 12 the specification “is always highly relevant to the claim construction analysis. Usually it is 13 dispositive; it is the single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at 14 1315. When the specification explains and defines a term without ambiguity or incompleteness, 15 “there is no need to search further for the meaning of the term.” Sinorgchem Co. v. ITC, 511 F.3d 16 1132, 1138 (Fed. Cir. 2007). However, courts do not read limitations from the specification, 17 including embodiments, into a claim. See Bradium Techs. LLC v. Iancu, 923 F.3d 1032, 1049 18 (Fed. Cir. 2019); Mastermine Software, Inc. v. Microsoft Corp., 874 F.3d 1307, 1310 (Fed. Cir. 19 2017). Sometimes there is a fine line between reading a claim in light of the written 20 description/specification and reading a limitation into the claim from the written 21 description/specification. Howmedica Osteonics Corp. v. Zimmer, Inc., 822 F.3d 1312, 1221 22 (Fed. Cir. 2016). “Specifications teach. Claims claim.” SuperGuide Corp. v. DirecTV Enters., 23 358 F.3d 870, 875 (Fed. Cir. 2004) (quoting SRI Int’l v. Matsushita Elect. Corp. of Am., 775 F.2d 24 1107, 1127 n.14 (Fed. Cir. 1985)). Third, the prosecution history is the “entire record of the 25 proceedings in the Patent Office from the first application papers to the issued patent.” E.I. du 26 Pont de Nemours & Co. v. Unifrax I LLC, 921 F.3d 1060, 1068 (Fed. Cir. 2019). “[T]he 27 prosecution history can often inform the meaning of the claim language by demonstrating how the 28 inventor understood the invention and whether the inventor limited the invention in the course of 4 Case 1:18-cv-00536-AWI-BAM Document 163 Filed 01/03/22 Page 5 of 34 1 prosecution, making the claim scope narrower than it would otherwise be.” Phillips, 415 F.3d at 2 1317. For example, through prosecution history, a patentee may define a claim term or disavow a 3 meaning or scope to which he would otherwise have an exclusive right by virtue of the claim 4 language. Data Engine Techs. LLC v. Google LLC, 10 F.3d 1375, 1382 (Fed. Cir. 2021). 5 Although “secondary to the intrinsic evidence, courts my rely on extrinsic evidence, which 6 consists of all evidence external to the patent and prosecution history (including expert and 7 inventor testimony, dictionaries, and learned treatises) in construing a claim term. Continental 8 Circuits, 915 F.3d at 799. However, “[i]n most situations, an analysis of the intrinsic evidence 9 alone will resolve any ambiguity in a disputed claim term.” Vitronics Corp. v. Conceptronic, Inc., 10 90 F.3d 1576, 1583 (Fed. Cir. 1996). “When an analysis of intrinsic evidence resolves any 11 ambiguity in a disputed claim term, it is improper to rely on extrinsic evidence to contradict the 12 meaning so ascertained.” Intel Corp. v. VIA Techs., 319 F.3d 1357, 1367 (Fed. Cir. 2003); see 13 Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008). 14 15 I. AGREED CLAIM CONSTRUCTIONS 16 The parties have agreed as to the meaning of three claim terms. See Doc. No. 129 at 1:26- 17 2:4. First, the term “from 10 to 50 wt. percent” in Claims 14 and 16 means “where the weight of 18 the subject ingredient is between 10 percent and 50 percent of the weight of the overall mixture, 19 including the ingredient.” Id. Second, the parties agree that the term “from 1 to 35 wt. percent” in 20 claims 14 and 16 means “where the weight of the subject ingredient is between 1 percent and 35 21 percent of the weight of the overall mixture, including the ingredient.” Id. Third, the term “from 22 90 to 100 weight percent” in Claim 16 means ““where the weight of the subject ingredient is 23 between 90 percent and 100 percent of the weight of the overall mixture, including the 24 ingredient.” Id. The Court adopts the parties’ joint construction of these three claim terms. 25 26 II. DISPUTED CLAIM CONSTRUCTIONS 27 As discussed above, the parties dispute seven terms between Claims 14 and 16. The Court 28 will assess each term separately. 5 Case 1:18-cv-00536-AWI-BAM Document 163 Filed 01/03/22 Page 6 of 34 1 1. “Treated Irrigation Water” (Claims 14 and 16) 2 Plaintiff’s Arguments 3 Deerpoint argues that “treated irrigation water” is part of the preamble to Claims 14 and 4 16. Preambles limit an invention if it recites essential structure or steps or if it is necessary to give 5 life, meaning, and vitality to the claim; preambles are not limiting where there is a structurally 6 complete invention in the claim body and the preamble only states a purpose or intended use for 7 the invention. Here, the body of Claims 14 and 16 are structurally complete on their own and 8 contain no references to “treated irrigation water.” The term “treated irrigation water” is not 9 needed to give life, meaning, or vitality to Claims 14 or 16. Because the “treated irrigation water” 10 preamble is merely descriptive, it has no bearing on infringement and needs no construction. 11 Alternatively, if the Court finds that “treated irrigation water” is limiting, no construction is 12 needed because its scope and meaning can be fully understood by a POSITA. 13 Defendant’s Arguments 14 Custom Ag argues that the preamble “treated irrigation water” is limiting in view of other 15 claims in the ‘179 Patent. Claim 1 discusses “treated irrigation water” and Claims 9, 10, 12, and 16 13 are dependent on, and thus limited by, Claim 1. Claim 1 indicates that “treated irrigation 17 water” is created from and thus, understood to mean flowing irrigation water in an irrigation 18 system that has had a potassium-plus nutrient feedstock added to it. Further, the specification 19 describes fertigation wherein the potassium-plus nutrient feedstock is charged to an active emitter 20 irrigation system to form treated irrigation water. The specification in several places refers to 21 converting irrigation water to treated irrigation water or treated irrigation water being formed by 22 the described method. Given the language of the specification and other claims, there is a limit on 23 the invention claimed. A POSITA would understand that “treated irrigation water” in Claim 14 24 means “flowing irrigation water in an irrigation system that has had a potassium-plus nutrient 25 feedstock added to it.” 26 Proposed Constructions 27 a. Plaintiff’s Proposed Construction 28 Deerpoint contends that the preamble is not limiting and no construction is needed. 6 Case 1:18-cv-00536-AWI-BAM Document 163 Filed 01/03/22 Page 7 of 34 1 b. Defendants’ Proposed Construction 2 Agrigenix and Mahoney propose the following construction: “irrigation water that has had 3 a potassium-plus nutrient feedstock added to it.” 4 Custom Ag proposes the following construction: “flowing irrigation water in an irrigation 5 system that has had a potassium-plus nutrient feedstock added to it.” 6 Discussion 7 Whether a preamble is limiting is an issue of claim construction. Data Engine, 10 F.4t h at 8 1380; see Bell Communs. Research, Inc. v. Vitalink Communs. Corp., 55 F.3d 615, 620 (Fed. Cir. 9 1995). In general, preambles may limit an invention if they recite essential structure or steps, or 10 are necessary to give life, meaning, and vitality to a claim. Arctic Cat, Inc. v. GEP Power Prods., 11 919 F.3d 1320, 1327 (Fed. Cir. 2019). Conversely, preambles are generally not limiting where the 12 patentee defines a structurally complete invention in the claim body and uses the preamble only to 13 state a purpose or intended use for the invention. Shoes by Firebug LLC v. Stride Rite Children’s 14 Grp., LLC, 962 F.3d 1362, 1367 (Fed. Cir. 2020). Nevertheless, there is no litmus test for 15 determining whether a preamble is limiting. Eli Lilly & Co. v. Teva Pharms. Int’l GmbH, 8 F.4th 16 1331, 1340 (Fed. Cir. 2021). Ultimately, whether to treat a preamble as limiting is determined 17 based on the facts of each case and in light of the claim as a whole, the invention as described in 18 the specification, and any illumination from the prosecution history. Arctic Cat, 919 F.3d at 1327; 19 see Eli Lilly, 8 F.4th at 1340. “[A] claim preamble has the import that the claim as a whole 20 suggests for it,” and when the patentee “chooses to use both the preamble and the body to define 21 the subject matter of the claimed invention, the invention so defined, and not some other, is the 22 one the patent protects.” Bell Communs., 55 F.3d at 620. 23 After applying the above principles, the Court agrees with the construction proposed by 24 Agrigenix and Mahoney. The term “treated irrigation water” means “irrigation water that has had 25 a potassium-plus nutrient feedstock added to it.” 26 This definition is consistent with the express language of Claim 14 and independent 27 Claims 1 and 17, which both use the term “treated irrigation water.” As stated above, Claim 14 28 reads: 7 Case 1:18-cv-00536-AWI-BAM Document 163 Filed 01/03/22 Page 8 of 34 A treated irrigation water comprising a potassium-plus nutrient feedstock and 1 irrigation water, wherein said potassium-plus nutrient feedstock is comprised of from 10 to 50 wt. percent potassium formate and from 1 to 35 wt. percent 2 additional yield-assist constituent(s). 3 ‘179 Patent at Claim 14. Claim 17 is extremely similar to Claim 14. Claim 17 reads: 4 A treated irrigation water comprising a potassium-plus nutrient feedstock and irrigation water, wherein said potassium-plus nutrient feedstock is comprised of 5 from 10 to 50 wt. percent potassium formate and from 1 to 35 wt. percent additional yield-assist constituent(s) comprised of irrigation water, from 100 to 6 10,000 ppm potassium as K2O and from 100 to 7,500 ppm additional yield-assist constituent(s). 7 ‘179 Patent at Claim 17. Finally, Claim 1 reads: 8 A method of discontinuous emitter-irrigation potassium-plus fertigation of an 9 agricultural field, said agricultural field being irrigated by means of an active emitter-irrigation system having a steam of flowing irrigation water upstream of 10 said agricultural field, said method comprising the steps of: 11 (step 1) converting said irrigation water to treated irrigation water by charging a potassium-plus nutrient feedstock to said stream of said flowing irrigation water 12 upstream of said agricultural field whereby said irrigation water is converted to treated irrigation water, wherein said potassium-plus nutrient feedstock is 13 comprised of from 10 to 50 wt. percent potassium formate, from 1 to 35 wt. percent additional yield-assist constituent(s) and water; 14 (step 2) irrigating said agricultural field with said treated irrigation water; and 15 (step 3) repeating step 1 and step 2 on 0 to 5 nonconsecutive irrigation days over a 16 crop cycle. 17 ‘179 Patent at Claim 1.3 18 Claims 14 and 17 explain the composition of “treated irrigation water” as being comprised 19 of irrigation water and a potassium-nutrient feedstock. That is, Claims 14 and 17 identify the 20 contents of the fertigation output, i.e. the treated irrigation water. Claim 1 explains how irrigation 21 water is converted to “treated irrigation water” in active fertigation. While Claim 1 is intended to 22 explain how to fertigate, it nonetheless describes the process of converting irrigation water to 23 treated irrigation water and that process involves only the combination of irrigation water and a 24 potassium-plus nutrient feedstock. The process of converting irrigation water into “treated 25 3The Court notes that Deerpoint’s reply brief argues that it is improper to consider unasserted method Claim 1 in 26 evaluating asserted composition Claim 14. The Court disagrees. Both claims use the term “treated irrigation water.” A term should be construed consistently among a patent’s claims, Phil-Insul Corp., 854 F.3d at 1359, and preambles 27 are construed in light of the entire patent. Eli Lilly, 8 F.4th at 1340. Further, in the prosecution history, Deerpoint explained that it had amended Claim 14 to express amounts in terms of weight percentage in accordance with Claim 1. 28 See Doc. No. 132-2 at ECF p.46. Thus, Deerpoint itself recognized when dealing with the Patent Office that Claim 1 and Claim 14 are related. Accordingly, it is entirely appropriate to consider Claim 1. 8 Case 1:18-cv-00536-AWI-BAM Document 163 Filed 01/03/22 Page 9 of 34 1 irrigation water” is consistent with the composition of “treated irrigation water” as described in 2 Claim 14. Therefore, the composition of “treated irrigation water” as found in Claims 14 and 17, 3 as well as the process for converting irrigation water into “treated irrigation water,” make it clear 4 that “treated irrigation water” is simply irrigation water that has had a potassium-plus nutrient 5 feedstock added to it. Accordingly, the Court agrees with the construction proposed by Agrigenix 6 and Mahoney. 7 The Court does not agree with Custom Ag that it is necessary to limit the definition of 8 “treated irrigation water” to include the concept of flowing irrigation water. Custom Ag and its 9 expert rely on Claim 1 to argue that “treated irrigation water” must including flowing water. As 10 quoted above, Claim 1 describes a method for active fertigation. Fertigation, as the Patent’s 11 “Background of the Invention” section recognizes, refers to adding fertilizers to water that is being 12 used to irrigate crops. See ‘179 Patent at col. 1 ll. 34-36. That is, fertigation under the ‘179 Patent 13 is an active process involving flowing water. In contrast, Claim 14 does not involve a method for 14 active fertigation. Instead, Claim 14 identifies the composition of the fertigation output, i.e. the 15 “treated irrigation water.” Identifying the process of creating treated irrigation water is not the 16 same as identifying what treated irrigation water actually is. The Court does not find that it is 17 appropriate to read part of the process of making “treating irrigation water” into the definition of 18 what “treated irrigation water” is – irrigation water that has had a potassium-plus nutrient 19 feedstock added to it. 20 The Court also disagrees with Deerpoint that no construction is needed. The term “treated 21 irrigation water” to a POSITA who is knowledgeable in chemistry and soil and water sciences 22 would likely mean that a problem with the irrigation water has been corrected chemically. 4 See 23 Krauter 1st Dec. at ¶ 23. However, from the entirety of the ‘179 Patent’s language, including the 24 language of Claim 14 itself, it is clear that the ‘179 Patent is not using “treated irrigation water” to 25 mean a problem with irrigation water that has been chemically corrected. Instead, the language of 26 Claims 14 and 16 and the ‘179 Patent as a whole show that “treated irrigation water” is merely 27 28 4The Court notes that Deerpoint’s expert chemist does not opine that “treated irrigation water” has a commonly accepted meaning. See Maitra 2d Dec. ¶ 10. 9 Case 1:18-cv-00536-AWI-BAM Document 163 Filed 01/03/22 Page 10 of 34 1 irrigation water that has had particular fertilizers added to it for the purposes of fertigation. Cf. id. 2 at ¶¶ 26-27. Therefore, a POSITA would understand the term “treated irrigation water” as used in 3 Claim 14 and dependent Claim 16 at a minimum to refer to irrigation water that has had a 4 potassium-plus nutrient feeds stock added to it. Cf. id. 5 Finally, the Court recognizes that Deerpoint’s expert chemist Dr. Maitra has stated that 6 Claim 14 when read without the “treated irrigation water” preamble describes a structurally 7 complete chemical composition. See Maitra 2d Dec. ¶ 10. Generally, preambles do not limit 8 structurally complete inventions. See Shoes by Firebug, 962 F.3d at 1367. However, this is a 9 general rule. See id. There is no litmus test for determining whether a preamble is limiting. See 10 Eli Lilly, 8 F.4th at 1340; Shoes by Firebug, 962 F.3d at 1367; Corning Glass Works v. Sumitomo 11 Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989). Therefore, that a structurally complete 12 chemical composition may be identified without the preamble does not per se mean that the 13 preamble is not limiting. See id. Here, the Court does not read Claim 14 as one that is a truly 14 independent and a stand-alone chemical composition. The ‘179 Patent as a whole is a for a system 15 of fertigation, which includes a method of fertigating and the composition of fertigation outputs 16 (irrigation water and fertilizer). Claim 14 identifies a fertigation output that is referred to as 17 “treated irrigation water” and has a particular composition. In order to give the invention of Claim 18 14 vitality and appropriate meaning as a fertigation output within the fertigation system described 19 in the ‘179 Patent, cf. Arctic Cat, 919 F.3d at 1327 (holding that preambles are evaluated in light 20 of the entirety of a patent), it is necessary to define the term “treated irrigation water.” 21 2. “Potassium-Plus Nutrient Feedstock” (Claim 14) 22 Plaintiff’s Arguments 23 Deerpoint argues that the term is partially defined by Claim 14 itself by requiring that the 24 mixture contain 10 to 50 wt. percent potassium formate and 1 to 35 wt. percent additional yield- 25 assist constituents. The Abstract of the ‘179 Patent describes a “potassium-plus nutrient feedstock 26 comprised of potassium formate and additional yield -assist constituent(s) and water.” The 27 Summary of the ‘179 patent describes the mixture as being “comprised of potassium formate, at 28 least one non-potassium formate constituent that is beneficial to the crop’s nutrient uptake and/or 10 Case 1:18-cv-00536-AWI-BAM Document 163 Filed 01/03/22 Page 11 of 34 1 soil condition. (‘additional yield-assist constituent’), which preferably is a macro-nutrient, and 2 water.” The specification also discloses other sources of potassium and compares them 3 unfavorably to potassium formate. However, while the patent does require that potassium formate 4 be used, it does not require that it be used as the exclusive source of potassium. A person of 5 ordinary skill in the art would know that there are numerous other sources of potassium. 6 Deerpoint contends that any attempt by Defendants to limit the source of potassium to 7 potassium formate is improper. While at least one ingredient in the feedstock must be a non- 8 potassium formate constituent, nothing in the patent excludes the possibility that the additional 9 yield-assist constituent contain potassium in another form. The patent simply does not limit the 10 source of all potassium in the potassium-plus nutrient feedstock to potassium solely from 11 potassium formate. 12 Deerpoint also contends that the prosecution history does not demonstrate any disavowal. 13 In order for disavowal to be found, there must have been a clear and unequivocal representation 14 that potassium formate, and no other source of potassium, could be present in the claimed 15 invention. Deerpoint acknowledges that the patent examiner in a July 2016 Non-Final Rejection 16 letter stated that claim 14 was not sufficiently enabled by identifying “potassium as K20” because 17 “it is clear from the specification that the potassium is required to be add ed as potassium formate.” 18 However, no rationale was provided by the examiner and no sections of the disclosures were cited 19 in support of the initial rejection. Further, “potassium as K2O” is a term of art referring to a 20 metric for the amount of potassium, not to the presence of actual K2O. The specification discloses 21 that preferred embodiments of the potassium-plus nutrient feedstock contain potassium, as 22 measured in K2O equivalents, at the level recited in the claims. Moreover, Deerpoint’s response 23 to the examiner did not disavow any scope. Deerpoint’s response made clear that the amended 24 version (which is now Claim 14) recited the same amount of potassium as the original version, but 25 merely expressed the amount in a different way. Deerpoint did not agree with the observations of 26 the of examiner, rather it asserted that no change in scope would result from the amendment. The 27 prosecution history simply cannot support a finding that Deerpoint disavowed any aspect of 28 Claims 14 and 16. 11 Case 1:18-cv-00536-AWI-BAM Document 163 Filed 01/03/22 Page 12 of 34 1 Defendant’s Arguments 2 Defendants argue that “potassium-plus nutrient feedstock” has no particular meaning to a 3 POSITA. Nevertheless, all the Claims in the ‘179 Patent recite potassium formate as the only 4 potassium-based constituent, and all seven examples in the Specification identify potassium only 5 from potassium formate. All other identified additional yield -assist constituents are non- 6 potassium-containing ingredients. Moreover, the specification clearly disclaims sources of 7 potassium other than potassium formate as not suitable for the potassium-plus nutrient feedstock 8 of the ‘179 Patent. To interpret Claims 14 and 16 as accepting non-potassium formate sources of 9 potassium would put the claims in violation of the requirement of 35 U.S.C. § 112 that the 10 “specification shall contain a written description of the invention, and of the manner and process 11 of making and using it, in such full, clear, concise, and exact terms as to enable any [POSITA] to 12 which it pertains, or with which it is most nearly connected, to make and use the same.” Finally, 13 the file history in this case demonstrates that the potassium in the potassium-plus nutrient 14 feedstock must be added as potassium formate. Claim 14 originally described the potassium-plus 15 nutrient feedstock as being comprised of “50 to 20,000 ppm potassium as K2O . . . .” The patent 16 examiner rejected Claim 14 because the disclosure was not commensurate in scope with the 17 recitation of “potassium as K2O” in that the specification required the potassium be added as 18 potassium formate. Deerpoint responded by amending Claim 14 to recite that the potassium-plus 19 nutrient feedstock is comprised of 10 to 50 wt. percent potassium formate . . . .” Under 20 conventional fertilizer label practice, “potassium as K2O” means the fertilizer contains as much 21 potassium in any form, as it would be if it were K2O. Thus, utilization of potassium in any form 22 was rejected and disclaimed. Moreover, the measures of potassium in the original submission and 23 the amended submission are different. The range in the original submission, 50 to 20,000 ppm, is 24 a 400 times increase from the minimum to the maximum range, while the amended submission, 10 25 to 50 wt. percent, is only a five times increase from the minimum to the maximum range. Thus, 26 pursuant to the doctrine of prosecution estoppel, Deerpoint conceded that the invention as patented 27 is not as broad as the original claim and that the potassium in the feedstock comes solely from 28 potassium formate. 12 Case 1:18-cv-00536-AWI-BAM Document 163 Filed 01/03/22 Page 13 of 34 1 Proposed Constructions 2 a. Plaintiff’s Proposed Construction 3 Deerpoint contends that no construction is needed and that the trier of fact can fully 4 understand the scope and meaning of the term as understood by a POSITA. Alternatively, 5 Deerpoint proposes: “an aqueous fertilizer mixture comprised of potassium formate and at least 6 one additional yield-assist constituent.” 7 b. Defendants’ Proposed Construction 8 All Defendants propose: “A liquid fertilizer mixture containing potassium provided solely 9 from potassium formate, in combination with one or more other non-potassium nutrient 10 constituents.” 11 Discussion 12 The Court does not agree that the term “potassium-plus nutrient feedstock” does not 13 require a definition. This term would be unknown to a POSITA with relevant expertise in the 14 fields of chemistry and soil and water sciences. See Krauter 1st Dec. ¶ 28. A POSITA would 15 understand the term “potassium-plus nutrient feedstock” through the claims, specification, and file 16 history of the ‘179 Patent. See id. Also, the parties have both agreed that a definition of 17 “potassium-plus nutrient feedstock” should include some indication that the feedstock is an 18 aqueous or liquid solution. The Court finds the parties’ agreement to be significant because, while 19 Claim 14 clearly indicates that the feedstock is added to irrigation water, Claim 14 itself does not 20 clearly state that the feedstock is itself a liquid. Given these considerations, the Court concludes 21 that it is necessary to construe the term “potassium-plus nutrient feedstock.” 22 The parties agree in general that the potassium-plus nutrient feedstock of Claim 14 is an 23 aqueous fertilizer mixture that is made of potassium formate and one additional yield-assist 24 constituent/nutrient constituent. The dispute between the parties regarding this term is whether the 25 total amount of potassium in the potassium-nutrient feedstock must be derived solely from 26 potassium formate. 27 a. Claim Language 28 The language of Claim 14 indicates that the potassium-plus nutrient feedstock is made of a 13 Case 1:18-cv-00536-AWI-BAM Document 163 Filed 01/03/22 Page 14 of 34 1 weight percentage range of potassium formate and a weight percentage range of an additional 2 yield-assist constituent. Potassium formate is a specific substance and ingredient. Thus, the first 3 ingredient of the potassium-plus nutrient feedstock is expressly limited to only potassium formate. 4 However, there is nothing about identifying that particular ingredient that in and of itself means 5 that potassium formate must be the only potassium containing ingredient in the feedstock as a 6 whole. Similarly, there is no limit on what the additional yield-assist constituent is or can be 7 (other than it being a beneficial plant nutrient) as long as it is not potassium formate. Thus, the 8 plain language of Claim 14, along with the parties’ agreement regarding the physical form of the 9 feedstock, indicates that a potassium-plus nutrient feedstock is an aqueous fertilizer mixture 10 comprised of potassium formate and at least one additional yield -assist constituent. This 11 construction would not prohibit the additional constituent/nutrient from containing potassium. 12 b. Prosecution History5 13 Defendants contend that Deerpoint’s amendment of Claim 14 and the doctrine of 14 prosecution history estoppel preclude Deerpoint from arguing that Claim 14 does not require that 15 all potassium in the potassium-plus feedstock be derived solely from potassium formate. 16 Under the doctrine of prosecution history estoppel, a “patentee’s decision to narrow his 17 claims through amendment may be presumed to be a general disclaimer of the territory between 18 the original claim and the amended claim.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki 19 Co., 535 U.S. 722, 740 (2002); Pharma Tech Sols., Inc. v. LifeScan, Inc., 942 F.3d 1372, 1380 20 (Fed. Cir. 2019). However, “[p]rosecution history estoppel applies as part of an infringement 21 analysis to prevent a patentee from using the doctrine of equivalents to recapture subject matter 22 surrendered from the literal scope of a claim during prosecution.” Trading Techs. Int'l, Inc. v. 23 Open E Cry, LLC, 728 F.3d 1309, 1322 (Fed. Cir. 2013). Prosecution history does not apply to 24 claims construction. See id.; Styku, LLC v. Fit3D, Inc., 2018 U.S. Dist. LEXIS 206444, *16 25 (C.D. Cal. Dec. 4, 2018); Home Gambling Network, Inc. v. Piche, 2013 U.S. Dist. LEXIS 141595, 26 27 5 The application for the ‘179 Patent was submitted by John and Deborah Miller, who are officers/principals of Deerpoint. At times, the briefing regarding prosecution history discusses the actions of the Millers. Because the 28 Court detects no relevant distinction between the Millers and Deerpoint for purposes of this motion, the Court will simply refer to “Deerpoint.” 14 Case 1:18-cv-00536-AWI-BAM Document 163 Filed 01/03/22 Page 15 of 34 1 *24-*25 (D. Nev. Sept. 30, 2013); CIVIX-DDI, LLC v. Microsoft Corp., 84 F.Supp.2d 1132, 1139 2 (D. Col. 2000). Therefore, the Court concludes that prosecution estoppel does not apply at this 3 stage of the proceedings. See id. 4 Nevertheless, the doctrine of prosecution disclaimer does apply to claims construction. 5 See Trading Techs., 728 F.3d at 1322. Prosecution disclaimer “precludes patentees from 6 recapturing through claim interpretation specific meanings disclaimed during prosecution.” 7 Traxcell Techs., LLC v. Nokia Sols. & Network Oy, 15 F.4th 1136, 1141 (Fed. Cir. 2021); Omega 8 Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003). Prosecution disclaimer 9 “applies where an applicant’s action during prosecution prospectively narrows the literal scope of 10 an otherwise expansive claim term.” Trading Techs., 728 F.3d at 1322. The doctrine ensures that 11 claims are not construed one way in order obtain their allowance from the USPTO and in a 12 different way against accused infringers. Traxcell Techs., 15 F.4th at 1141; Omega Eng’g, 334 13 F.3d at 1380. Prosecution disclaimer can arise from both claim amendment and arguments. 14 Traxcell Techs., 15 F.4th at 1141; Tech. Props. Ltd. LLC v. Huawei Techs. Co., 849 F.3d 1349, 15 1357 (Fed. Cir. 2017). However, prosecution disclaimer applies only if the patentee has 16 unequivocally disavowed a certain meaning to obtain a patent in a way that is clear and 17 unmistakable to a person of ordinary skill in the art. See Traxcell Techs., 15 F.4th at 1141; Tech. 18 Props., 849 F.3d at 1357. If the challenged actions are “ambiguous or amenable to multiple 19 reasonable interpretations, prosecution disclaimer is not established.” Tech. Props., 849 F.3d at 20 1358. The party asserting prosecution disclaimer has the burden of demonstrating the existence of 21 a “clear and unmistakable” disclaimer that would have been evident to one skilled in the art. 22 Massachusetts Inst. of Tech. v. Shire Pharm., Inc., 839 F.3d 1111, 1122 (Fed. Cir. 2016); Elbex 23 Video, Ltd. v. Sensormatic Elecs. Corp., 508 F.3d 1366, 1371-72 (Fed. Cir. 2007). Even if the 24 “prosecution history statements do not rise to the level of unmistakable disavowal, they do inform 25 the claim construction.” Shire Dev., LLC v. Watson Pharms., Inc., 787 F.3d 1359, 1366 (Fed. Cir. 26 2015). For example, an applicant’s amendment accompanied by explanatory remarks can define a 27 claim term by demonstrating what the applicant meant by the amendment. Personalized Media 28 Communs., LLC v. Apple Inc., 952 F.3d 1336, 1340 (Fed. Cir. 2020). 15 Case 1:18-cv-00536-AWI-BAM Document 163 Filed 01/03/22 Page 16 of 34 1 The basis for disavowal or disclaimer is an amendment that was made to Claim 14. “[A]n 2 amendment that clearly narrows the scope of a claim, such as by the addition of a new claim 3 limitation, constitutes a disclaimer of any claim interpretation that would effectively eliminate the 4 limitation or that would otherwise recapture the claim’s original scope.” Schindler Elevator Corp. 5 v. Otis Elevator Co., 593 F.3d 1275, 1285 (Fed. Cir. 2010). Claim 14 was changed in response to 6 a non-final rejection by the United State Patent & Trademark Office (“USPTO”). Claim 14 was 7 rejected by the USPTO on the basis of 35 U.S.C. § 112(a). Claim 14 initially read: “A treated 8 irrigation water comprising potassium-plus nutrient feedstock comprised of irrigation water, from 9 50 to 20,000 ppm potassium as K2O and from 50 to 15,000 ppm additional yield -assist 10 constituents.” Doc. No. 132-2 at ECF p.23. The USPTO stated, “The ‘enabling’ disclosure is not 11 commensurate in scope with recitation of ‘potassium as K2O,’ since it is clear from the 12 specification that the potassium is required to be added as potassium formate.” Id. at ECF p.32. 13 Deerpoint responded by submitting Claim 14 as it now currently reads: “A treated irrigation water 14 comprising a potassium-plus nutrient feedstock and irrigation water, wherein said potassium-plus 15 nutrient feedstock is comprised of from 10 to 50 wt. percent potassium formate and from 1 to 35 16 wt. percent additional yield-assist constituent(s).” As part of the amendment process, Deerpoint 17 responded to the USPTO in relevant part: 18 Claims 14-20, all of which express the amount of potassium formate as “potassium as K2O,” have been rejected under [29 U.S.C. §] 112. Claims 14 and 17, the 19 independent claims within this group, have each separately been amended to express the potassium-plus nutrient feedstock constituents in terms of weight 20 percent, following the parameters recited in claim 1, and deleting recitations that are redundant and/or are expressed in other parameters. 21 Id. at ECF p.46 (emphasis added). 22 Defendants contend that by amending Claim 14 to reference potassium formate instead of 23 potassium as K2O, Deerpoint lost the benefit of using potassium derived from any source, not just 24 potassium formate, as part of the potassium-plus nutrient feedstock. In contrast, Deerpoint 25 contends that its response to the patent examiner made clear that the amended version recited the 26 same amount of potassium as the original version, but merely expressed the amount in a different 27 way. That is, the amended claim presented the potassium in units of potassium formate instead of 28 16 Case 1:18-cv-00536-AWI-BAM Document 163 Filed 01/03/22 Page 17 of 34 1 units of K2O. Deerpoint further contends that original Claim 14 recited the amount of potassium 2 in the claimed composition of irrigation water, while amended/current Claim 14 recites the amount 3 of potassium formate in the feedstock, which is a constituent part of the treated irrigation water. 4 Deerpoint argues that neither their amendment nor their remarks literally limit the source of 5 potassium to potassium formate. 6 The Court is not satisfied with either side’s interpretation of the prosecution history. 7 The Court disagrees with two central premises of Deerpoint’s interpretation. First, the 8 Court does not agree that the potassium reference in original Claim 14 was limited to describing 9 irrigation water while the potassium reference in amended Claim 14 is limited to describing the 10 feedstock. As stated above, original Claim 14 read: “A treated irrigation water comprising 11 potassium-plus nutrient feedstock comprised of irrigation water, from 50 to 20,000 ppm potassium 12 as K2O and from 50 to 15,000 ppm additional yield-assist constituents.” Original Claim 14 uses 13 the word “comprising” twice. As relevant here, the second use of “comprising” follows the term 14 “potassium-nutrient feedstock.” The words following the second use of “comprising” are 15 irrigation water, potassium, and additional yield-assist constituent. That is, there are three 16 substances listed after the second use of “comprising,” meaning that original Claim 14 was 17 attempting to identify three ingredients of the feedstock. The word “comprising” does not follow 18 the term “irrigation water.” If “potassium as K2O” were truly intended to be a component of 19 “irrigation water,” then one would expect Deerpoint to use the word “comprising” after “irrigation 20 water,” not before it. To accept Deerpoint’s argument that original Claim 14 described the 21 contents of “irrigation water” as being comprised of “potassium as K2O” and an additional yield 22 assist constituent would give a new definition and understanding to the term “irrigation water” and 23 would leave the term “potassium-plus nutrient feedstock” insufficiently described/defined. It also 24 makes little sense for “potassium as K2O” to be used in the definition of “irrigation water” instead 25 of as an ingredient of “potassium-plus nutrient feedstock” since “potassium” is expressly 26 referenced as part of the feedstock. Further, both original and amended Claim 14 identified and 27 described “treated irrigation water.” Both amended and original Claim 14 describe a feedstock, 28 some form of potassium, additional yield-assist constituents, and irrigation water. The same 17 Case 1:18-cv-00536-AWI-BAM Document 163 Filed 01/03/22 Page 18 of 34 1 general components of “treated irrigation water” are identified in both original and amended 2 Claim 14. It is apparent to the Court that original Claim 14 is attempting to convey in a less artful 3 manner what amended Claim 14 clearly describes – “treated irrigation water” is irrigation water 4 that has had a potassium-plus nutrient feedstock added to it. The potassium and additional yield- 5 assist constituents are what comprise the feedstock, they are not what comprises the irrigation 6 water. Contrary to Deerpoint’s argument, original and amended Claim 14 describe the same thing 7 and their use of the term “potassium” (either as K2O or potassium formate) is understood as an 8 ingredient of the feedstock, not the irrigation water. 9 Second, Deerpoint’s argument that original Claim 14 expressed the total amount of 10 potassium is not persuasive. Deerpoint does not address a key representation that accompanied its 11 amendment. Deerpoint’s explanation to the USPTO stated that Claims 14 through 20 had all 12 expressed the amount of potassium formate, not the total amount of potassium, as “potassium as 13 K2O” in the treated irrigation water. See Doc. No. 132-2 at ECF p.46; cf. Personalized Media, 14 952 F.3d at 1340. This explanation is directly contrary to Deerpoint’s position in this Court. The 15 explanation states that the amendments were made to express amounts in weight percentages (in 16 accordance with Claim 1) and to eliminate any recitations that were redundant or expressed “in 17 other parameters.” Changing a reference from “potassium as K2O” to “potassium formate,” and 18 changing the amounts from ppm (parts per million) to weight percentages, are changes to the 19 parameters for expressing the amount of potassium formate in the potassium-plus nutrient 20 feedstock. Deerpoint’s explanation to the USPTO indicates that Claim 14, be it the original or 21 amended version, has always described or been intended to describe the total amount of potassium 22 formate, not the total amount of amount of potassium, as the first ingredient of the potassium-plus 23 nutrient feedstock. See Personalized Media, 952 F.3d at 1340. 24 The Court agrees that the reference to “potassium as K2O” in original Claim 14 was an 25 invocation of the standard N-P-K labeling convention. Utilizing this labeling convention could 26 reasonably be interpreted as identifying the total amount of potassium in the feedstock because the 27 convention identifies total amounts of nitrogen, phosphorous, and sodium regardless of source. 28 However, because all sources of potassium in the N-P-K labeling convention are expressed in 18 Case 1:18-cv-00536-AWI-BAM Document 163 Filed 01/03/22 Page 19 of 34 1 terms of “potassium as K2O” irrespective of the actual derivation, it is not necessarily 2 unreasonable to interpret “potassium as K2O” as one way of quantifying potassium formate. The 3 N-P-K labeling convention simply does not account for amounts of potassium formate apart from 4 a measurement that is in “potassium as K2O.” Therefore, the explanation that accompanied the 5 amendment to Claim 14 is not necessarily inconsistent with the N-P-K labeling convention. 6 With respect to Defendants’ arguments, while the Court agrees that the prosecution history 7 demonstrates that potassium formate is a required ingredient of the potassium-plus nutrient 8 feedstock, the Court cannot agree that the prosecution history demonstrates that potassium formate 9 must be the only source of potassium in the potassium-plus nutrient feedstock. Defendants’ 10 argument assumes that original Claim 14’s reference to “potassium as K2O” was a reference to the 11 total amount of potassium in the feedstock. However, as discussed above, Deerpoint explained to 12 the USPTO that original Claim 14 (as well as claims 15 through 20) all expressed the amount of 13 potassium formate, not the total amount of potassium, in the feedstock. This explanation is not 14 necessarily inconsistent with the N-P-K convention because the total amount of potassium formate 15 would be expressed as “potassium as K2O.” By replacing “potassium as K2O” with “potassium 16 formate,” Deerpoint did not give up a broader reading of the first ingredient because it does not 17 appear that Deerpoint ever asserted to the USPTO that the first ingredient was anything other than 18 potassium formate. Thus, because the first ingredient in the potassium-plus nutrient feedstock is 19 and has always been potassium formate, amended Claim 14 did not narrow the scope of original 20 Claim 14 by replacing “potassium as K2O” with “potassium formate.” 21 The Court concludes that the prosecution history demonstrates that both original and 22 amended Claim 14 identified quantities of potassium formate as the first ingredient of the 23 potassium-plus nutrient feedstock. See Personalized Media, 952 F.3d at 1340. As a result, the 24 prosecution history is not so clear that a POSITA would understand that Deerpoint disavowed the 25 addition of potassium from sources that are in addition to potassium formate as part of the total 26 composition of the potassium-plus nutrient feedstock. Tech. Props., 849 F.3d at 1358. 27 c. Specification 28 The specification includes a list of seven examples of potential potassium-plus nutrient 19 Case 1:18-cv-00536-AWI-BAM Document 163 Filed 01/03/22 Page 20 of 34 1 feedstocks. See ‘179 Patent at col. 4 l. 47 to col. 6 l. 9. Those seven examples are then quantified 2 in Table 1 in terms of N-P-K values in percentage weights. See ‘179 Patent at Table 1. As 3 Defendants correctly point out, for each of the seven examples provided, the only source of 4 potassium is potassium formate. See id. The ‘179 Patent does not say that the seven examples 5 represent an exclusive list of embodiments or all possible feedstocks. 6 The Federal Circuit has held that specifications need only teach one mode of making and 7 using a claimed composition. Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1335 8 (Fed. Cir. 2003). Moreover, it is not appropriate to incorporate limitations from the specification 9 into a claim. Bradium Techs., 923 F.3d at 1049. The Court is aware of no authority that would 10 require the ‘179 Patent to disclose all the ways of making the feedstock or all the potential 11 formulations that would fit within the express parameters of Claim 14. Therefore, that all of the 12 seven non-exclusive examples list potassium formate, and do not list any other potassium 13 containing substances, does not mean the potassium formate must be the only potassium 14 containing substance in the potassium-plus nutrient feedstock. Cf. Bradium Techs., 923 F.3d at 15 1049; Amgen, 314 F.3d at 1335. 16 d. Conclusion 17 After considering the parties’ arguments in light of the claim language, the specification of 18 the ‘179 Patent, and the prosecution history, the Court agrees with the construction proposed by 19 Deerpoint. Therefore, the term “potassium-plus nutrient feedstock” means “ an aqueous fertilizer 20 mixture comprised of potassium formate and at least one additional yield -assist constituent.” 21 3. “Potassium Formate” (Claim 14) 22 Plaintiff’s Argument 23 Deerpoint argues that the disagreement among the parties is whether the potassium-plus 24 nutrient feedstock must contain a certain amount of dissolved potassium formate or whether the 25 feedstock must be made by adding molecular/solid potassium formate. The ‘179 Patent does not 26 require that the feedstock be made with molecular potassium formate. Instead, the specification 27 includes seven examples that all have a liquid potassium formate solution. There is no 28 requirement regarding how the aqueous potassium formate solution is formed. A POSITA would 20 Case 1:18-cv-00536-AWI-BAM Document 163 Filed 01/03/22 Page 21 of 34 1 understand that a potassium formate solution does not contain molecular potassium formate, rather 2 it contains potassium and formate ions. To read in a requirement that the potassium-plus nutrient 3 feedstock contain molecular potassium formate or that potassium formate solution be made with 4 molecular potassium formate would be contrary to the language of the ‘179 Patent. 5 Deerpoint also argues that Defendants seek to improperly limit the scope of Claim 14 by 6 limiting how the composition is made. The expert witnesses in this case both agree that a 75% 7 aqueous solution of potassium formate can be made from a variety of reagents, not just molecular 8 potassium formate salt. Further, the only potassium formate that would be present in the liquid 9 solution disclosed in the specification’s examples would be fully dissolved and in the form of 10 potassium cations and formate anions. The chemical symbols are represented by the “-“ and “+” 11 symbols in the proposed construction. 12 Finally, Deerpoint replies that a 75% aqueous solution of potassium formate contains no 13 molecular potassium formate salt. As a result, there is no distinction between HCO2K(aq), which 14 is a formulation accepted by Defendants and (HCO2)- (aq) + K + (aq), which is not accepted by 15 Defendants. That is, at the relevant concentrations, these two formations describe the same 16 substance. Further, contrary to Defendants’ apparent assertion, Deerpoint does not argue that a 17 combination of an additional yield assist constituent with potassium formate, which would contain 18 potassium ions, formate ions, and other components (ions or otherwise), should together be called 19 “potassium formate.” Also, Deerpoint contends that Defendants’ position would improperly 20 distinguish between chemically identical forms of potassium formate on the unclaimed and 21 undisclosed basis of how they are made or what they are used for. Deerpoint also states that it is 22 not attempting to broaden the scope of its claims. The claims recite that the composition at issue 23 is comprised of inter alia potassium plus nutrient feedstock and that the feedstock contains 24 potassium formate. Deerpoint states that it seeks only to ensure that some forms of potassium 25 formate are not arbitrarily excluded. 26 Defendant’s Argument 27 Custom Ag argues that it accepts various chemical representations for potassium formate, 28 including those with an “(aq)” designation. That is because potassium formate is highly water 21 Case 1:18-cv-00536-AWI-BAM Document 163 Filed 01/03/22 Page 22 of 34 1 absorbent (hygroscopic), may be sold as a liquid, and the examples given in the ‘179 Patent all 2 begin with a 75 wt. percent liquid solution of potassium formate. However, Custom Ag contends 3 that the chemical representations of potassium formate that have “-” and “+” symbols (which 4 indicate anions and cations, respectively) are too broad because the source of these ions may be 5 something other than potassium formate. Expressing potassium cations and formate anions in this 6 manner means the substance is in solution and exists only as components. The formate and 7 potassium ions will no longer have the same properties and chemical activity as potassium formate 8 and may react with other ions that are almost certain to be found in the solution. 9 Custom Ag also argues that they are not contending that the feedstock must be made by 10 adding molecular potassium formate. Custom Ag acknowledges that potassium formate may be in 11 an aqueous form. Deerpoint is confusing an ingredient of the liquid fertilizer mixture with a step 12 in the method of making the mixture. Custom Ag also argues that Deerpoint is attempting to 13 expand their claims because potassium ions and formate ions could exist in a solution without 14 potassium formate ever having been used as an ingredient. It is appropriate to refer to ionic 15 components in a solution as the compound they would become as they precipitated or if the 16 objective of the chemical process was the synthesis of that compound. It is not appropriate to refer 17 to the combination of components in one step of a multi-step process as they compound that they 18 could potentially combine to form if the process is ended after such a step, where subsequent steps 19 immediately follow include other ions that combine to form a different product. The simultaneous 20 presence of potassium cations and formate anions in a complex solution with other anions and 21 cations does not justify designating the solution as “potassium formate.” Custom Ag argues that 22 its position does not require that potassium formate be made in a particular way, but does require 23 that potassium formate (either in molecular or aqueous form) be used as an ingredient in the 24 potassium plus nutrient feedstock. 25 Proposed Construction 26 a. Plaintiff’s Proposed Construction 27 Deerpoint contends that no construction is needed and that the trier of fact can fully 28 understand the scope and meaning of the term as understood by a POSITA. Alternatively, 22 Case 1:18-cv-00536-AWI-BAM Document 163 Filed 01/03/22 Page 23 of 34 1 Deerpoint proposes: “potassium formate (denoted HCO2K, HCOOK, HCO2K(aq), HCOOK(aq), 2 (HCO2)- + K+ , (HCOO)- + K+, (HCO2)- (aq) + K + (aq)+, (HCOO)- (aq) + K + (aq).” 3 b. Defendants’ Proposed Construction 4 Agrigenix and Mahoney propose: “potassium formate (CHKO2) added as an ingredient 5 into the liquid fertilizer mixture.” 6 Custom Ag proposes: “potassium formate (CHKO 2 , HCO 2 K, HCOOK, HCO 2K(aq), or 7 HCOOK(aq)), added as an ingredient into the liquid fertilizer mixture.” 8 Discussion 9 All parties acknowledge through either briefing or proposed constructions that potassium 10 formate is required to be used as an ingredient in the potassium-plus nutrient feedstock. This 11 acknowledgment is appropriate as it comports with the clear and obvious reading of Claim 14, as 12 well as the ‘179 Patent as a whole. As discussed above, the potassium-plus nutrient feedstock 13 must include a percentage weight of potassium formate. Because of the obvious and clear 14 expression of potassium formate as an ingredient, the Court finds that it is unnecessary, as 15 suggested by Defendants, to expressly define potassium formate in part as “an ingredient” in the 16 potassium-plus nutrient feedstock. Therefore, the question really is, what does the term 17 “potassium formate” mean and/or whether it is necessary to define what “potassium formate” is? 18 Custom Ag and Deerpoint agree on a number of points regarding potassium formate. To 19 wit, potassium formate is a chemical substance and that one molecule of potassium formate is 20 composed of one hydrogen atom, one carbon atom, two oxygen atoms, and one potassium atom; 21 potassium formate in “molecular form” is a solid salt; potassium formate can also exist in an 22 aqueous or water solution and, assuming appropriate ratios of potassium formate and water, 23 aqueous potassium formate will fully dissolve and exists as potassium cations and formate anions 24 in the water; and potassium formate can be synthesized utilizing other substances. 25 This agreement is based on the opinions of the parties’ experts and on the external 26 scientific publications submitted or cited by the parties.6 In other words, there is agreement on 27 numerous scientifically accepted aspects of potassium formate. There is nothing about Claim 14 28 6 For this reason, the Court has no reason to believe that Agrigenix and Mahoney would disagree. 23 Case 1:18-cv-00536-AWI-BAM Document 163 Filed 01/03/22 Page 24 of 34 1 or the ‘179 Patent as a whole that suggests the term “potassium formate” should be construed in a 2 manner contrary to the above generally accepted scientific aspects of the substance. 3 There does appear to be a dispute as to the appropriateness of representing potassium 4 formate as ions. Dr. Maitra opined that aqueous potassium formate can be represented as HCO 2 - 5 (aq) + K +(aq) and (HCO 2 K(aq)), and that another way of writing (HCO 2 K(aq)) is (HCO 2 - (aq) + 6 K+(aq)). See Maitra 1st Dec. ¶ 34; Maitra 3d Dec. ¶ 5. Dr. Maitra also opined that Deerpoint’s 7 proposed chemical formulas/representations that identify ions (formate anions and potassium 8 cations) are all appropriate methods of writing aqueous potassium formate. See Maitra 2d Dec. ¶ 9 9. Custom Ag’s expert does not disagree with the general proposition that these are acceptable 10 ways of writing potassium formate. Dr. Krauter utilized similar symbols to describe aqueous 11 potassium formate when he opined that the “complete chemical equation for potassium formate 12 dissolving in solution is expressed as: CHO 2 K ⇄ (HCO 2 )- + K+.” Krauter 1st Dec. ¶ 37. 13 Moreover, Dr. Krauter testified that “if potassium formate alone is added to pure water, a certain 14 amount of the potassium formate will dissolve and become (HCO 2 )- + K+.” Id. at ¶ 38. Thus, both 15 experts express the concept of aqueous potassium formate in terms of formate anions plus 16 potassium cations. 17 Deerpoint has expressed concern and spent a significant amount of its briefing to argue that 18 Defendants are improperly attempting to limit “potassium formate” to molecular or solid salt 19 potassium formate and imposing a restriction on how the potassium formate is made. However, 20 Custom Ag does not argue that molecular potassium formate must somehow be used in the 21 potassium-plus nutrient feedstock. Several times in their briefing, Custom Ag expressly states this 22 and also accepts the chemical representation of potassium formate in aqueous solution, e.g. 23 HCO 2 K(aq), which would mean that there is no solid salt. Custom Ag also agrees that potassium 24 formate can be synthesized with other substances, and the admission is not limited to the synthesis 25 of molecular potassium formate. Therefore, the Court does not agree that Custom Ag is arguing 26 that “potassium formate” in Claim 14 must refer to molecular potassium formate. Further, while 27 Custom Ag argues that potassium formate must be an ingredient of the potassium-plus nutrient 28 feedstock, neither Custom Ag nor Dr. Krauter argue that the potassium formate must be made or 24 Case 1:18-cv-00536-AWI-BAM Document 163 Filed 01/03/22 Page 25 of 34 1 synthesized in a particular way. The absence of such an argument is consistent with the ‘179 2 Patent. Claim 14 recites limitations on what comprises the potassium-plus nutrient feedstock/what 3 the ingredients of the potassium-plus nutrient feedstock are. Nothing in Claim 14 or the ‘179 4 Patent as a whole set a requirement for how or through what method the potassium formate 5 component of the feedstock is made. Therefore, the Court does not agree that Custom Ag is 6 arguing that the “potassium formate” in Claim 14 must be made in a particular way. 7 7 Custom Ag expressed concerns that Deerpoint is attempting to argue that any aqueous 8 solution that contains a potassium anion and a formate anion can be called “potassium formate” 9 irrespective of whatever else might be in the solution and irrespective of whether potassium 10 formate is used to supply potassium cations and formate anions. However, Deerpoint has 11 acknowledged that potassium formate is a required ingredient and clarified that its proposed 12 expressions of aqueous potassium formate that identify ions refer only to potassium cations, 13 formate anions, and water. See Doc. No. 138 at 10:3-10. Deerpoint further clarifies that when 14 potassium formate is combined with an additional yield assist-constituent to become the 15 potassium-plus nutrient feedstock, even though the feedstock solution would contain components 16 and ions other than potassium cations and formate anions, Deerpoint would not refer to the 17 solution as “potassium formate.” Consistent with Deerpoint’s briefing, Dr. Maitra’s declarations 18 do not state that other substances are involved in the “ionic representations” of potassium formate 19 or that a solution with potassium cations and formate ions is potassium formate irrespective of 20 what else might be in the solution. Therefore, the Court does not view Deerpoint as contending 21 that a solution that contains potassium cations and formate anions is always properly referred to as 22 “potassium formate” irrespective of the presence of other ions or substances. 23 24 7As stated above, Agrigenix and Ma honey did not file additional briefing and thus, did not respond to Deerpoint’s briefing. It is possible to read Agrigenix and Mahoney’s proposed construction as attempting to limit “potassium 25 formate” to a molecular form because the chemical formula utilized by these defendants does not include an aqueous notation. To the extent that Agrigenix and Mahoney are contending that potassium formate must be utilized in 26 molecular form, the Court agrees with Deerpoint that such a limitation is inappropriate. Suc h a limitation would exclude the seven examples in the specification because the seven examples utilize a 75 weight percent aqueous 27 solution of potassium formate. Because that construction would exclude each example provided in the specification, and there is nothing about the ‘179 Patent to suggest such a construction is necessary, Agrigenix and Mahoney’s 28 proposed construction is improper. See GE Lighting Sols. v. AgiLight, Inc., 750 F.3d 1304, 1311 (Fed. Cir. 2014); Vitronics, 90 F.3d at 1583-84. 25 Case 1:18-cv-00536-AWI-BAM Document 163 Filed 01/03/22 Page 26 of 34 1 From the above, the Court is satisfied that there is material agreement as to what potassium 2 formate is. That substantial agreement is based on scientifically accepted understandings of 3 potassium formate, including its composition, potential physical forms (salt/molecular or aqueous 4 solution), and ability to be synthesized. There is nothing from the language of Claim 14 or the 5 ‘179 Patent as a whole to suggest that the term “potassium formate” is being used in a manner 6 inconsistently from the general scientifically accepted understanding of potassium formate. 7 Moreover, the plain language and the agreement of the parties make it clear that potassium 8 formate must be an ingredient of the potassium-plus nutrient feedstock in Claims 14 and 16. 9 Therefore, the Court concludes that Deerpoint’s chemical representations are generally 10 appropriate. However, in order to add clarity, the Court will describe potassium formate in 11 general and differentiate denotations for molecular and aqueous potassium formate. Also, in order 12 to further address concerns raised by Custom Ag, the Court will utilize an additional set of 13 parenthesis with respect to the cation and anion formulations (just as Dr. Maitra did, see Maitra 3d 14 Dec. ¶ 5) in order to show that a single “substance” is being referenced. Accordingly, the Court 15 holds that the term “potassium formate” means: a chemical substance consisting of one hydrogen 16 atom, one carbon atom, two oxygen atoms, and one potassium atom that may exist in molecular or 17 salt form or in an aqueous form; molecular or salt potassium formate may be denoted as HCO 2 K, 18 HCOOK; aqueous potassium formate, i.e. potassium formate in a water solution, may be denoted 19 as HCO 2 K(aq), HCOOK(aq), ((HCO 2 )- + K +), ((HCOO)- + K+), ((HCO 2 )- (aq) + K + (aq)), or 20 ((HCOO)- (aq) + K + (aq)). 21 4. “Additional Yield-Assist Constituent” (Claims 14 and 16) 22 Plaintiff’s Arguments 23 Deerpoint argues that the ‘179 Patent at one point parenthetically refers to an additional 24 yield-assist constituent as “at least one non-potassium formate constituent that is beneficial to the 25 crop’s nutrient-uptake and/or soil condition.” This is an appropriate definition. The ‘179 Patent 26 later provides numerous examples of specific constituents that could be used as an additional 27 yield-assist constituent. Providing specific examples is not the same as limiting additional yield- 28 assist constituents to the examples or clearly disavowing other substances that could be an 26 Case 1:18-cv-00536-AWI-BAM Document 163 Filed 01/03/22 Page 27 of 34 1 additional yield-assist constituent but that are not listed. Additionally, in reply, Deerpoint argues 2 that there is nothing about the prosecution history that shows all potassium in the potassium-plus 3 nutrient feedstock can only be derived from potassium formate. 4 Defendant’s Arguments 5 Custom Ag argues that the specification and examples of potassium-plus nutrient feedstock 6 identify a number of possible “additional yield assist constituents,” but none of the examples 7 include a substance that contains potassium. Moreover, through an amendment in response to a 8 conditional rejection, Deerpoint is estopped from arguing that potassium in the potassium-plus 9 nutrient feedstock can be derived from substances other than potassium formate. Therefore, an 10 additional yield-assist constituent cannot contain potassium. 11 Proposed Constructions 12 a. Plaintiff’s Construction 13 Deerpoint contends that no construction is needed as the trier of fact can fully understand 14 the scope and meaning of the term as understood by one of ordinary skill in the art. Alternatively, 15 Deerpoint proposes: “at least one non-potassium formate constituent that is beneficial to the 16 crop’s nutrient-uptake or soil condition.” 17 b. Defendants’ Construction 18 Agrigenix and Mahoney propose the following construction: “at least one non-potassium 19 formate ingredient beneficial to the crop’s nutrient uptake and/or soil condition that are limited to 20 diammonium phosphate, ammonia, ammonium nitrate, phosphoric acid, formic acid, zinc 21 disodium ETA, iron sodium ETA, copper disodium ETA, manganese disodium EDTA, AMPT, or 22 EDTA.” 23 Custom Ag proposes the following: “at least one non-potassium ingredient beneficial to 24 the crop’s uptake and/or soil condition.” 25 Discussion 26 The Court does not agree that the term “additional yield -assist feedstock” does not require 27 a definition. This term would be unknown to a POSITA with relevant expertise in the fields of 28 chemistry and soil and water sciences. See Krauter 1st Dec. ¶ 28. There is also no indication in 27 Case 1:18-cv-00536-AWI-BAM Document 163 Filed 01/03/22 Page 28 of 34 1 the three declarations from Dr. Maitra that the term “additional yield -assist feedstock” has an 2 accepted meaning in chemistry. Moreover, the meaning of the term is not obvious from the 3 language of Claims 14 or 16. Therefore, construction of the term is appropriate. 4 a. Claim Language 5 The language of Claims 14 and 16 clearly places two limitations on “additional yield-assist 6 constituents.” First, because the potassium-plus nutrient feedstock is composed of both 7 “potassium formate” and “additional yield-assists constituent(s),” the “additional yield-assist 8 constituent(s)” logically must be something other than potassium formate. Otherwise, it would be 9 possible for the potassium nutrient feedstock to be composed purely of potassium formate, which 10 would read out of the concept of an “additional yield-assist constituent.” Second, the Claims 11 place limits on the amounts of additional yield-assist constituents in the feedstock. Additional 12 yield-assist constituents are limited to 1 to 35 weight percent of the potassium nutrient feedstock. 13 Claim 16 also limits the composition of the additional yield-assist constituent(s) to 90 to 100 14 weight percent of “N (as N), P (as P2O5), acid and combinations thereof.” However, that 15 limitation only applies to Claim 16, and the list of nitrogen, phosphorous, and acid is not 16 exhaustive because the limitation is not set at 100 weight percent. It is possible for a substance 17 other than nitrogen, phosphorous, and acid to make up the other possible 1 to 9 weight percent if 18 either nitrogen, phosphorous, acid or combinations thereof make up less than 100 weight percent 19 of the additional yield-assist constituent. No other limitations are found in the plain language of 20 the Claims 14 and 16, including any limitation that would prohibit an “additional yield -assist 21 constituent” from containing potassium. 22 b. Specification 23 In the summary section of the specification, the ‘179 Patent states: “The present invention 24 provides a method for discontinuous emitter-irrigation potassium-plus fertigation . . . wherein a 25 potassium-plus nutrient feedstock comprised of potassium formate, at least one non-potassium 26 formate constituent that is beneficial to the crop’s nutrient-uptake and/or soil condition 27 (“additional yield-assist constituent”) . . . .” ‘179 Patent at col. 3 ll. 21-28. Deerpoint is correct 28 that this section supports its proposed construction. 28 Case 1:18-cv-00536-AWI-BAM Document 163 Filed 01/03/22 Page 29 of 34 1 Additionally, the specification lists a number of substances that qualify as an “additional 2 yield-assist constituent.” These substances are urea, zinc disodium EDTA, iron disodium EDTA, 3 copper disodium EDTA, manganese disodium EDTA, diammonium phosphate, ammonia, 4 ammonium nitrate, phosphoric acid, and formic acid. None of the examples include as an 5 additional yield-assist constituent either potassium or a substance that contains potassium. 6 However, as noted above, specifications need only teach one mode of making and using a claimed 7 composition, Amgen, 314 F.3d at 1335, and it is not appropriate to incorporate limitations from 8 the specification into a claim. Bradium Techs., 923 F.3d at 1049. Therefore, that all of the seven 9 non-exclusive examples list additional yield-assist constituents that do not contain potassium does 10 not mean that only non-potassium containing substances can be an “additional yield -assist 11 constituent.” See Bradium Techs., 923 F.3d at 1049; Amgen, 314 F.3d at 1335. Also, for these 12 same reasons, it is inappropriate, as suggested by Agrigenix and Mahoney, to limit the additional 13 yield-assist constituents to the non-potassium formate substances identified in the specification. 14 See id. 15 c. Prosecution History 16 The amendments to original Claims 14 and 16 changed the measure of the amounts of 17 additional yield assist-constituents, but did not change the term “additional yield -assist 18 constituent(s).” Further, the explanations that accompanied Deerpoint’s amendments do not 19 indicate that particular substances (apart from potassium formate) cannot be “additional yield- 20 assist constituents,” nor do the amendments state that “additional yield assist constituents” cannot 21 contain particular elements, specifically potassium. There is no evidence limit in the prosecution 22 history on what the additional yield-assist constituent can be. Moreover, as discussed above, the 23 prosecution history is not so clear that a POSITA would understand that Deerpoint disavowed the 24 addition of potassium from sources that are in addition to potassium formate as part of the total 25 composition of the potassium-plus nutrient feedstock. The amendments and Deerpoint’s response 26 clarified that the first ingredient of the potassium-plus nutrient feedstock has always been 27 potassium formate. Therefore, the prosecution history does not indicate that only non-potassium 28 containing substances can be an “additional yield-assist constituent.” 29 Case 1:18-cv-00536-AWI-BAM Document 163 Filed 01/03/22 Page 30 of 34 1 d. Conclusion 2 Deerpoint’s proposed construction excludes potassium formate as a possible “additional 3 yield-assist constituent,” Custom Ag’s proposed construction excludes “non-potassium” 4 substances as possible “additional yield-assist constituents,” and Agrigenix and Mahoney’s 5 proposed construction limits “additional yield-assist constituents” to the substances listed in the 6 examples of the specification. The language of Claims 14 and 16 does not support Defendants’ 7 various limitations. First, it is improper to limit what the additional yield-assist constituent might 8 be on the basis of the ‘179 Patent’s non-exclusive seven samples. Second, the prosecution history 9 is not sufficiently clear to show that Deerpoint disclaimed/disavowed potassium formate as the 10 only source of potassium in the potassium-plus nutrient feedstock or that Deerpoint represented to 11 the USPTO that it (Deerpoint) understood that potassium formate could be the only source of 12 potassium in the feedstock. Therefore, the Court concludes that the definition found in the 13 specification, which is essentially Deerpoint’s proposed construction, is appropriate. The term 14 “additional yield-assist constituent(s)” means “at least one non-potassium formate constituent that 15 is beneficial to the crop’s nutrient-uptake and/or soil condition.” 16 5. “N (nitrogen as N) and P (phosphorous as P2O5)” (Claim 16) 17 Plaintiff’s Proposed Construction 18 Deerpoint contends that no construction is necessary. Alternatively, Deerpoint proposes 19 that “N (nitrogen as N)” be construed to mean “nitrogen in any form, expressed in terms of an 20 equivalent amount of nitrogen in the form of N,” and that “P (phosphorous) be construed to mean 21 “phosphorous in any form, expressed in terms of an equivalent amount of phosphorous in the form 22 of P2O5.” 23 Defendants’ Proposed Construction 24 Agrigenix and Mahoney propose construing “N (nitrogen as N)” to mean “nitrogen as 25 provided from urea, diammonium phosphate, ammonia, or ammonium nitrate,” and propose 26 construing “P (phosphorous as P2O5) to mean “the element phosphorous as part of the phosphate 27 pentoxide (P2O5) provided from diammonium phosphate or phosphoric acid. 28 Custom Ag proposes construing “N (nitrogen as N)” to mean “nitrogen in any form not 30 Case 1:18-cv-00536-AWI-BAM Document 163 Filed 01/03/22 Page 31 of 34 1 containing potassium, expressed in terms of an equivalent amount of nitrogen in the form of N,” 2 and proposes construing “P (phosphorous as P2O5)” to mean “phosphorous in any form not 3 containing potassium, expressed in terms of an equivalent amount of phosphorous in the form of 4 P2O5.” 5 Discussion 6 The Court does not find Agrigenix and Mahoney’s proposed construction to be persuasive. 7 As with other disputed terms, Agrigenix and Mahoney’s proposed construction takes sources of 8 nitrogen and phosphorous from the examples or specification and then attempts to limit the 9 possible sources of nitrogen and phosphorous to those disclosed sources. This improperly limits 10 the scope of the terms and patent and thus, is an inappropriate construction. See Bradium Techs., 11 923 F.3d at 1049; Amgen, 314 F.3d at 1335. 12 With respect to the constructions proposed by Custom Ag and Deerpoint, the constructions 13 are very similar. The only difference between the two proposed limitations is that Custom Ag 14 limits the construction of these two terms to exclude substances that contain potassium. 15 Custom Ag’s limitation is based on the prosecution history and specification. However, as 16 discussed above, the specification and the prosecution history (Deerpoint’s representations to the 17 USPTO and amendments) are insufficient for the Court to conclude that potassium formate can be 18 the only source of potassium in the potassium-plus nutrient feedstock. Therefore, there is no basis 19 for the Court to limit “N (nitrogen as N)” and “P (phosphorous as P2O5)” to substances that do 20 not contain potassium. 21 The ‘179 Patent at times uses the N-P-K convention for fertilizer labels. Both Dr. Krauter 22 and Dr. Maitra discuss and acknowledge this labeling convention, of which “N (nitrogen as N)” 23 and “P (phosphorous as P2O5)” are a part. See Krauter 1st Dec. at ¶ 13; Maitra 1st Dec. ¶ 41. A 24 POSITA would understand “N (nitrogen as N)” and “P (phosphorous as P2O5)” to be a reference 25 to the N-P-K fertilizer labeling convention. The definitions urged by Deerpoint and Custom Ag 26 (less the limitation regarding potassium containing substances) align with the N-P-K labeling 27 convention. Therefore, the Court finds that: “N (nitrogen as N)” means “nitrogen in any form, 28 expressed in terms of an equivalent amount of nitrogen in the form of N,” and “P (phosphorous as 31 Case 1:18-cv-00536-AWI-BAM Document 163 Filed 01/03/22 Page 32 of 34 1 P2O5)” means “phosphorous in any form, expressed in terms of an equivalent amount of 2 phosphorous in the form of P2O5.” 3 6. “Acid” 4 Plaintiff’s Proposed Construction 5 Deerpoint argues that no construction of this term is necessary and that a lay person’s 6 understanding of the term is sufficient. 7 Defendants’ Proposed Construction 8 Agrigenix and Mahoney contend that the term “acid” should be construed to mean 9 “phosphoric acid, formic acid, or a combination of the two.” 10 Custom Ag argue that the term acid requires no construction, other than to limit the term to 11 acids that do not contain potassium. See Doc. No. 132 at 21:14-17. 12 Discussion 13 Agrigenix and Mahoney’s proposed construction takes acids identified in the examples or 14 specification and then attempts to limit the acids that could form an “additional yield-assist 15 constituent” to those specific acids. This improperly limits the scope of the terms and patent and 16 thus, is an inappropriate construction. See Bradium Techs., 923 F.3d at 1049; Amgen, 314 F.3d at 17 1335. 18 As for Deerpoint and Custom Ag’s positions, the Court has explained that there is an 19 insufficient basis in the prosecution history, specification, and claim language to limit the source 20 of all potassium in the potassium-plus nutrient feedstock to potassium formate. With the rejection 21 of that limitation, Custom Ag and Deerpoint agree by default that no construction of the term 22 “acid” is necessary. Therefore, the Court concludes that no construction of the term “acid” is 23 necessary. 24 // 25 // 26 // 27 // 28 // 32 Case 1:18-cv-00536-AWI-BAM Document 163 Filed 01/03/22 Page 33 of 34 1 ORDER 2 Accordingly, IT IS HEREBY ORDERED that: 3 1. The term “treated irrigation water” is construed to mean “irrigation water that has had a 4 potassium-plus nutrient feedstock added to it.” 5 2. The term “potassium-plus nutrient feedstock” is construed to mean “ an aqueous fertilizer 6 mixture comprised of potassium formate and at least one additional yield -assist 7 constituent.” 8 3. The term “potassium formate” is construed to mean “a chemical substance consisting of 9 one hydrogen atom, one carbon atom, two oxygen atoms, and one potassium atom that 10 may exist in molecular or salt form or in an aqueous form; molecular or salt potassium 11 formate may be denoted as HCO 2 K or HCOOK; aqueous potassium formate, i.e. potassium 12 formate in a water solution, may be denoted as HCO 2 K(aq), HCOOK(aq), ((HCO 2 )- + K+), 13 ((HCOO)- + K+), ((HCO 2 )- (aq) + K + (aq)), or ((HCOO)- (aq) + K + (aq)).” 14 4. The term “additional yield-assist constituent” is construed to mean “at least one non- 15 potassium formate constituent that is beneficial to the crop’s nutrient-uptake and/or soil 16 condition.” 17 5. The term “N (nitrogen as N)” is construed to mean “nitrogen in any form, expressed in 18 terms of an equivalent amount of nitrogen in the form of N.” 19 6. The term “P (phosphorous as P2O5)” is construed to mean “phosphorous in any form, 20 expressed in terms of an equivalent amount of phosphorous in the form of P2O5.” 21 7. The term “acid” is sufficiently clear and needs no construction. 22 8. The term “from 10 to 50 wt. percent” means “where the weight of the subject ingredient is 23 between 10 percent and 50 percent of the weight of the overall mixture, including the 24 ingredient.” 25 9. The term “from 1 to 35 wt. percent” means “where the weight of the subject ingredient is 26 between 1 percent and 35 percent of the weight of the overall mixture, including the 27 ingredient.” 28 10. The term “from 90 to 100 weight percent” means ““where the weight of the subject 33 Case 1:18-cv-00536-AWI-BAM Document 163 Filed 01/03/22 Page 34 of 34 1 ingredient is between 90 percent and 100 percent of the weight of the overall mixture, 2 including the ingredient.” 3 IT IS SO ORDERED. 4 5 Dated: December 30, 2021 SENIOR DISTRICT JUDGE 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 34