Cellulose Material Solutions, LLC v. SC Marketing Group, Inc. ( 2023 )

1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 NORTHERN DISTRICT OF CALIFORNIA 10 San Francisco Division 11 CELLULOSE MATERIAL SOLUTIONS, Case No. 22-cv-03141-LB LLC, 12 CLAIM-CONSTRUCTION ORDER Plaintiff, 13 Re: ECF Nos. 32, 47, 49, 50 v. 14 SC MARKETING GROUP, INC., 15 Defendant. 16 17 INTRODUCTION 18 Plaintiff Cellulose Material Solutions claims that defendant SC Marketing Group infringes a 19 patent for packaging insulation that keeps the package contents — for example, meal kits with 20 food items — cool and fresh without the need for refrigerant packs. The patent is U.S. Patent No. 21 11,078,007 (the ’007 patent). The parties are competitors.1 Cellulose’s insulation product is called 22 InfinityCore, and SC Marketing’s product is called Renewliner.2 23 The court construes the disputed terms as follows:3 24 25 1 Compl. – ECF No. 1 at 1–2 (¶ 1), 4 (¶ 16), 6 (¶ 30); U.S. Patent No. 11,078,007 (filed June 27, 2016) – ECF No. 1-1. Citations refer to material in the Electronic Case File (ECF); pinpoint citations are to 26 the ECF-generated page numbers at the top of documents and sometimes also to the page numbers at the bottom of documents. 27 2 Compl. – ECF No. 1 at 2 (¶ 2), 3 (¶ 15). The complaint capitalizes the names. 1 Claim Term Construction “uniform thickness” plain and ordinary meaning 2 “resiliently compressible” “returns to the original form after being 3 “resiliently expand” compressed” 4 “fibrous batt comprised primarily” “a batt comprised primarily of [thermoplastic or PET] fibers” 5 “folded without the need for creases, plain and ordinary meaning grooves, or cut lines” 6 “foldable” 7 “air laid thermoplastic fibrous batt” “A batt comprising thermoplastic fibers, where the batt is formed using airlaying” 8 9 10 STATEMENT 11 The ’007 patent relates to an improved insulation product that protects perishable products 12 during shipment.4 Prior insulation products were semi-rigid expanded styrene panels or polymer or 13 paper bags stuffed with cotton.5 The ’007 patent describes an insulation system comprised of a 14 batt (a core) made of thermoplastic fibers with thermoplastic film adhered to the batt’s sides (like a 15 sandwich). The insulation can be shipped flat and compressed. It expands when it is unpacked and 16 can be folded “readily” to match the inside of a packing box.6 17 The claims at issue are independent claims 1, 20, and 23. 18 Claim 1 of the patent recites the following: 1. A method for insulating packaging containers comprising: providing a flat 19 laminated packaging insulation which is of uniform thickness, resiliently 20 compressible and foldable, cut to size for locating in a packaging container, said packaging insulation comprising an air laid thermoplastic fibrous batt comprised 21 primarily of thermoplastic fibers, said batt being of uniform thickness, resiliently compressible and foldable, and having foldable thermoplastic film material adhered 22 to both sides of said batt to form a laminate which can be folded without the need 23 for creases, grooves[,] or cut lines in said laminate to facilitate folding, whereby said laminated packaging insulation can be manufactured, compressed[,] and 24 25 26 4 ’007 Patent – ECF No. 1-1 at 2 (at [57]), 10 (col. 1 ll. 23–34). 27 5 Id. at 10 (col. 1 ll. 16–19). shipped as a flat panel of uniform thickness, and allowed to resiliently expand and 1 be folded for insertion into a packing container.7 2 Claim 20 recites the following: 3 20. A package insulation material comprising: a flat laminated packaging insulation which is of uniform thickness, resiliently compressible and foldable, cut 4 to size for locating in a packaging container, said packaging insulation comprising a thermoplastic fibrous batt comprised primarily of thermoplastic fibers, said batt 5 being of uniform thickness, resiliently compressible and foldable, and having 6 foldable thermoplastic film material adhered to both sides of said batt to form a laminate which can be folded without the need for creases, grooves[,] or cut lines in 7 said laminate to facilitate folding, whereby said laminated packaging insulation can be manufactured, compressed[,] and shipped as a flat panel, and allowed to 8 resiliently expand and be folded for insertion into a packing container.8 9 Claim 23 recites the following: 10 23. A product shipping combination comprising: a packaging container; a flat laminated packaging insulation which is of uniform thickness, resiliently[] 11 compressible and foldable, being cut to size for folding and locating in said packaging container, said packaging insulation comprising an air laid PET 12 [polyethylene] fibrous batt comprised primarily of PET fibers, said batt being of uniform thickness, resiliently compressible and foldable, and having foldable PET 13 film material adhered to both sides of said batt to form a laminate which can be 14 folded without the need for creases, grooves[,] or cut lines in said laminate to facilitate folding, whereby said laminated packaging insulation can be 15 manufactured, compressed[,] and shipped as a flat panel, allowed to resiliently expand and be folded for insertion into said packing container; said laminated 16 packaging insulation being folded and inserted into said packaging container.9 17 18 The court held a claim-construction hearing on May 25, 2023. All parties consented to 19 magistrate-judge jurisdiction.10 20 GOVERNING LAW 21 Generally, claim terms are given their ordinary and customary meaning from the perspective 22 of a person of ordinary skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 23 1303, 1312–13 (Fed. Cir. 2005) (en banc). A person of ordinary skill in the art is “deemed to read 24 25 26 7 Id. at 11 (col. 4 ll. 19–33). 8 Id. at 12 (col. 5 ll. 30–43). 27 9 Id. (col. 6 ll. 19–34). 1 the claim term not only in the context of the particular claim in which the disputed term appears, 2 but [also] in the context of the entire patent, including the specification.” Id. at 1313. 3 “In some cases, the ordinary meaning of claim language as understood by a person of skill in 4 the art may be readily apparent even to lay judges, and claim construction in such cases involves 5 little more than the application of the widely accepted meaning of commonly understood words.” 6 Id. at 1314. In other cases, “determining the ordinary and customary meaning of the claim requires 7 examination of terms that have a particular meaning in a field of art.” Id. That is because (1) the 8 meaning of a claim term, as understood by a person of skill in the art, is not often apparent and (2) 9 patentees frequently use terms idiosyncratically. Id. In these cases, courts look to sources available 10 to the public to show what a person of skill would have understood the disputed term to mean. Id. 11 The sources include the words of the claim, the specification, the prosecution history, and 12 “extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and 13 the state of the art.” Id. 14 Claim construction may differ from the ordinary and customary meaning of a term only “1) 15 when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee 16 disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. 17 Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). To act as an “own 18 lexicographer, a patentee must clearly set forth a definition of the disputed claim term other than its 19 plain and ordinary meaning.” Id. (cleaned up); Phillips, 415 F.3d at 1316 (the specification may 20 reveal a special definition for a term, in which case, the inventor’s lexicography governs). “The 21 standard for disavowal of claim scope is similarly exacting:” it must be a “clear disavowal of [the] 22 claim scope.” Thorner, 669 F.3d at 1366; Phillips, 415 F.3d at 1316 (the specification may show the 23 inventor’s “intentional disclaimer, or disavowal, of claim scope”). 24 The claims “provide substantial guidance as to the meaning of particular claim terms.” 25 Phillips, 415 F.3d at 1314. But as discussed above, the claims do not stand alone: they are part of a 26 “fully integrated written instrument consisting principally of a specification that concludes with 27 the claims,” and for that reason, the claims “must be read in view of the specification, of which 1 claim-construction analysis. Id. “Usually, it is dispositive; it is the single best guide to the meaning 2 of a disputed term.” Id. 3 Nonetheless, a court must “avoid the danger of reading limitations from the specification into 4 the claim.” Id. at 1323. Thus, for example, if a specification “describes only a single embodiment” 5 of a claimed invention, that does not mean that the court must construe the claims as limited to 6 that embodiment. Id. Rather, “[t]o avoid importing limitations from the specification into the 7 claims, it is important to keep in mind that the purposes of the specification are to teach and enable 8 those of skill in the art to make and use the invention and to provide a best mode for doing so.” Id. 9 The best way to do that often is to provide one or more examples. Id. 10 A person of ordinary skill in the art also looks at the prosecution history of a patent to 11 understand how the patent applicant and the Patent Office understood the claim terms. Id. at 1313, 12 1317. The prosecution history lacks the clarity of the specification and thus is less useful for claim 13 construction. But it can “inform the meaning of the claim language by demonstrating how the 14 inventor understood the invention and whether the inventor limited the invention in the course of 15 prosecution, making the claim scope narrower than it would otherwise be.” Id. at 1317; Aylus 16 Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1359 (Fed. Cir. 2017) (patent owner’s statements in an 17 IPR proceeding can support a finding of prosecution disclaimer during claim construction). 18 Courts also have the discretion to consider extrinsic evidence, including expert and inventor 19 testimony, dictionaries, and learned treatises, if necessary or helpful to construe the true meaning 20 of claim terms, so long as the evidence is not used to “vary[] or contradict[] the terms of the 21 claims.” Markman v. Westview Instruments, Inc., 52 F.3d 967, 980–81 (Fed. Cir. 1995). The 22 evidence “may be helpful to explain scientific principles, the meaning of technical terms, and 23 terms of art that appear in the patent and prosecution history.” Id. at 980; Phillips, 415 F.3d at 24 1312–17. But this evidence is “less significant than the intrinsic record [the claims, specification, 25 and prosecution history] in determining the legally operative meaning of claim language.” 26 Phillips, 415 F.3d at 1317. The intrinsic evidence “is a more reliable guide to the meaning of a 27 claim term than are extrinsic sources like technical dictionaries, treatises, and expert testimony.” 1 F.3d at 1318-19). A court must be careful not to elevate extrinsic sources of evidence “to such 2 || prominence ... that it focuses the inquiry on the abstract meaning of words rather than on the 3 || meaning of claim terms within the context of the patent.” Phillips, 415 F.3d at 1321. 4 The “correct construction” is the one that “stays true to the claim language and most naturally 5 || aligns with the patent’s description of the invention.” Jd. at 1316. 6 7 ANALYSIS 8 1. Claim Term: “Uniform Thickness” (Claims 1, 20, 23) 9 The parties’ proposed constructions are as follows: 10 Claim Term: “Uniform Thickness” (Claims 1, 20, 23) SC Marketing = wv “A thickness that is not altered by predefined | Indefinite creases, grooves, cut lines[,] or the like to . . 13 || | facilitate folding” Alternatively: “The thickness of the packaging insulation 14 remains the same in all cases and at all times.”!! 5 16 The term is in the claims but is not in the specification. Cellulose amended the claims 3 17. || voluntarily to add the term to distmguish its packaging from the McKinnon prior art, which was = 18 || foldable because it was scored with grooves or creases.'* Put another way, thickness in the 19 || Cellulose packaging is defined by the absence of the McKinnon characteristics. 20 More specifically, after the USPTO referenced the McKinnon prior art during the patent 21 || prosecution, Cellulose explained the meaning of the uniform-thickness limitation: 22 McKinnon’s laminate is foldable only because the laminated panel is separated into segments by a plurality of grooves or creases, which act as hinges. . . . In contrast 23 to McKinnon, Applicant’s “flat laminated packaging insulation” . . . is flat and of uniform thickness and thus has no creases or folds to facilitate folding? 24 25 1! Joint Claim-Constr. Statement — ECF No. 32-2 at 2 (p. 1). 27 214 (citing Cellulose’s responses to the USPTO). 28 || ' 10/10/19 Resp., Ex. E to Mitchell Decl. — ECF No. 47-6 at 243 (p. 242). 1 Cellulose made its voluntary amendment to the claims, adding a further limitation of cut lines, 2 and again explaining the uniform-thickness term: This response is a clarifying supplement to the response filed October 10, 2019. 3 Claims 1, 21, and 24 have been amended for clarification and to amend the phrase 4 “without creases or grooves” to state “without creases, grooves or cut lines.” McKinnon uses all three words to describe the features which make his laminate 5 foldable, and which also prevent it from being flat and of uniform thickness.14 6 Cellulose contends that (1) it offered “uniform thickness” only to distinguish its product from 7 the McKinnon prior art’s creases, grooves, and cut lines, and (2) SC Marketing’s proposed 8 “thickness is the same in all cases and at all times” is not justified by the record and is contradicted 9 by the understanding of those skilled in the art of non-woven material that the thickness of the 10 material is necessarily subject to some degree of variation.15 SC Marketing counters that the term 11 is indefinite because (in part) the specification provides no guidance. Also, it asserts, Cellulose’s 12 proposed construction reads out the term “uniform” (contrary to the requirement that the court 13 give meaning to all terms in a claim), Cellulose elsewhere argued that the language is temporally 14 limited only to the period before folding, and the claim already recites the limitation that the 15 laminate can be folded “without the need for creases, grooves or cut lines.”16 16 SC Marketing is right: Cellulose’s proposed construction essentially eliminates the term 17 uniform and reiterates the limitation later in the claims that the laminate can be folded without the 18 need for creases, grooves, or lines. But SC Marketing’s proposed construction is not supported by 19 the record, which shows some necessary variability. Neither parties’ construction is workable. The 20 court gives the term its plain and ordinary meaning. It is not indefinite, given the limitation later in 21 the claim that the laminate can be folded without the need for creases, lines, or grooves: that 22 limitation “inform[s] those skilled in the art about the scope of the invention with reasonable 23 certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014). 24 25 14 11/6/19 Resp., Ex. E to Mitchell Decl. – ECF No. 47-6 at 163 (p. 162). 26 15 Pl.’s Corrected Opening Claim-Constr. Br. – ECF No. 47 at 15–16 (quoting Osswald Expert Report, 27 Ex. H to Mitchell Decl. – ECF No. 47-9 at 13–14 (pp. 12–13) (¶ 43)). 16 Def.’s Responsive Cl. Constr. Br. – ECF No. 49 at 10–12 (case citations omitted) (citing ’007 Patent 1 2. Claim Terms: “Resiliently Compressible” and “Resiliently Expand” (Claims 1, 20, 23) 2 The parties’ proposed constructions are as follows: 3 Claim Terms: “Resiliently Compressible” and “Resiliently Expandable” (Claim 1, 20, 23) SC Marketing 5 “Resiliently Compressible” “Resiliently Compressible” “Capable of being compressed but expanding | Indefinite 6 from the compressed state once the Alternatively: compressing force is removed; 1.e.,not _ emalively: 7 permanently compressed by the compressing | “Returns to the original form after being force” compressed and/or folded without any lasting 8 deformation” 9 sage cc “15 “Resiliently Expand” Resiliently Expand 10 “Naturally expanding from a compressed state Indefinite once a compressing force is removed” Alternatively: “Returns to the original form after being s 12 compressed and/or folded and lacks any lasting deformation”!’ 14 The abstract describes the product: “packaging insulation which can be shipped flat and 3 15 || compressed, which expands when unpacked and which can be readily folded to match the interior A 16 || configuration of a shipping container, such as a cardboard box.”!® The specification adds the s 17 || following: 18 Surprisingly, the laminated PET [polyethylene] product can be compressed to a greater degree than other types of fibrous batts used in packaging insulation, making it 19 more economical to ship to the customer. When the laminated PET batts are unpacked at the customer’s location, they expand back to at least near their original thickness, 20 and can be folded to fit the packaging container in which product is to be shipped. □□ 21 Cellulose’s expert explains that 22 A [person of ordinary skill in the art] would understand that the non-woven laminates are manufactured of polymeric materials which have viscoelastic 23 mechanical properties. . . . This results in a laminate that is viscoelastic, which springs back to nearly its original thickness. A [person of ordinary skill in the art] would understand that because of the viscoelastic mechanical behavior of 25 polymers, the original thickness is not recovered, or is recovered after some time ||, [SOO ‘7 Joint Claim-Constr. Statement — ECF No. 37-2 at 5 (p. 4), 17 (p. 16). 27 || 18-007 patent ECF No. 1-1 at2 (at [57]). 28 || 1° Jd. at 11 (col. 3 Il. 50-56). after releasing the load. A [person of ordinary skill in the art] would also know that 1 because of viscoelasticity, the amount the laminate springs back depends on the 2 length of time the laminate remains compressed. A laminate that is compressed for a long time will take longer to recover its original thickness, or may never 3 completely recover that thickness.20 4 In response to the USPTO’s citation of the McKinnon prior art, Cellulose explained that “[i]t 5 may be that a honeycomb structured core can be ‘smushed down’ by pressing on it, but it is 6 certainly not ‘resiliently compressible.’ Once ‘compressed,’ the honeycomb core would be 7 permanently compressed.”21 8 Cellulose contends that “resiliently compressible” and “resiliently expand” mean that the 9 material can be compressed and then return to the non-compressed state once the compressing 10 force is removed.22 SC counters that the attribute of resiliency is indefinite: (1) it is a function of 11 time, (2) it is a term of degree, and (3) claim 1 is a method claim that requires the step of 12 providing a laminate that is resiliently compressible, later recites the step that the laminate “can be 13 . . . compressed and allowed to resiliently expand,” but never makes clear whether the claimed 14 step of “providing” the laminate requires that it be actually compressed and allowed to resiliently 15 expand.23 SC Marketing elaborates that Cellulose’s construction does not resolve the ambiguity 16 and compounds it because it does not provide any guidance about the degree of resilience, 17 meaning the degree of expansion following removal of the compressing force.24 18 The specification explains that the insulation is shipped flat and compressed for economy of 19 shipment and, when unpacked at the customer’s location, “expand[s] back to at least near [its] 20 original thickness.”25 Considering the intrinsic evidence, the court construes the terms as “returns 21 to the original form after being compressed.” The prosecution history supports this construction: 22 Cellulose distinguished the McKinnon prior art, which would be permanently compressed if 23 24 20 Osswald Expert Report, Ex. H to Mitchell Decl. – ECF No. 47-9 at 18 (p. 17) (¶ 50)). 25 21 10/10/19 Resp., Ex. E to Mitchell Decl. – ECF No. 47-6 at 242 (p. 241). 26 22 Pl.’s Corrected Opening Claim-Constr. Br. – ECF No. 47 at 18, 23. 23 Def.’s Responsive Cl. Constr. Br. – ECF No. 49 at 13–14, 18–19. 27 24 Id. at 14–15, 18–19. 1 || pressure was applied. Cellulose’s expert describes a laminate that is viscoelastic, meaning, it 2 || springs back to nearly its original thickness. The term is not indefinite: the claim, read in light of 3 || the specification, “informs those skilled in the art about the scope of the invention with reasonable 4 || certainty.” Nautilus, 572 U.S. at 910. 5 6 3. Claim Term: “Fibrous Batt Comprised Primarily” (Claims 1, 20, 23) 7 The parties’ proposed constructions are as follows: 8 Claim Term: “Fibrous Batt Comprised Primarily” (Claims 1, 20, 23) SC Marketing “A batt comprised chiefly/essentially of “The fibrous batt is comprised mostly, but not 10 thermoplastic or (more specifically per some | entirely, of [thermoplastic/PET] fibers””® claims in suit) PET fibers” 12 The patent describes the composition of the product: “[p]ackaging insulation for insertion into & 13 || apackaging container, which includes an air laid thermoplastic fibrous batt having foldable 14 || thermoplastic film material adhered to both sides of the batt. Preferably the thermoplastic material 15 || of which the fibers and film are made is the same, and most preferably it is PET [polyethylene].”7’ 5 16 It reiterates: 3 17 The present invention comprises packaging insulation for insertion into a packaging container, which includes a fibrous batt comprised of thermoplastic Z 18 polymer fibers, having foldable thermoplastic polymer film adhered to both sides of the batt. . . . Preferably the same thermoplastic polymer is used for the polymer 19 fibers and the polymer film, and preferably it is PET, and most preferably recycled 20 and recyclable.”* 21 Also, 22 In the preferred embodiment, laminated packaging insulation 1 comprises a fibrous polyethylene terephthalate (PET) fiber batt 10, laminated between two layers of PET 23 film material 20 (FIG. 1)... . While other thermoplastic polymers can be used for the fibers and film, preferably the same thermoplastic polymer is used for the polymer 24 fibers and the polymer film, preferably it is PET, and most preferably recyclable and 25 recycled. By using the same thermoplastic material for the fibers, the binder fibers 26 Joint Claim-Constr. Statement — ECF No. 32-2 at 8 (p. 7). 27 || 27-007 patent ECF No. 1-1 at2 (at [57]). 28 || 78 Id. at 10 (col. 1 Il. 23-34). and the film, the packaging insulation material may be readily recycled in 1 commercial recycle centers. Recycled PET is the most preferable thermoplastic 2 material. The non-woven PET fiber batt 10 is formed of PET staple fibers, preferably fibers made from recycled PET (recycled PET fibers), having a length between 20– 3 72 mm, preferably between 20 to 60 mm. . . . As above, preferably the same thermoplastic polymer is used for the polymer binder fibers, the batt fibers and the 4 polymer film, preferably it is PET, and most preferably recycled and recyclable. The PET film material used is preferably made from recycled PET (recycled PET film).29 5 6 Cellulose contends that its definition is meant to “exclud[e] the purposeful introduction of non- 7 recyclable materials but admit[] of the presence of some impurities.”30 It cites its expert’s 8 statement that a person of ordinary skill in the art would understand that (1) “the constituency of 9 the fibrous batt is made of thermoplastic materials with some impurities as are unavoidable given 10 existing manufacturing technologies” and (2) “‘primarily’ would not admit of the purposeful 11 introduction of non-recyclable materials.”31 12 SC Marketing counters that the term necessarily excludes fibrous batts that are comprised 13 entirely of thermoplastic or PET fibers. It cites the patent’s “specification [that] teaches an 14 embodiment where the PET fibers are ‘mixed with’ between 5% to 30% binder fibers” that are 15 “heated together in an oven where they tack together to ‘give the batt cohesion.’” “The 16 specification teaches that these binder fibers are composed of a different material such as ‘lower 17 melting point resinous fibers such as polyolefin, PVA, or PVOH.’”32 18 Cellulose responds that this reading makes no sense: polyolefin, PVA, and PVOH are all 19 thermoplastic materials (as science and a full reading of the intrinsic record show): 20 From about 5 to about 30% thermoplastic binder fibers, more preferably about 10– 25%, and most preferably about 15–20%, are mixed in with the PET fibers. Binder 21 fibers may be lower melting point resinous fibers such as polyolefin, PVA or PVOH; or may be bi-component fibers including a higher melting point 22 23 24 25 29 Id. (col. 1 ll. 58–67 to col. 2 ll. 1–40). 30 Pl.’s Corrected Opening Claim-Constr. Br. – ECF No. 47 at 21. 26 31 Id. (citing Osswald Expert Report, Ex. H to Mitchell Decl. – ECF No. 47-9 at 22–23 (pp. 21–22) 27 (¶¶ 62–63)). 32 Def.’s Responsive Cl. Constr. Br. – ECF No. 49 at 15 (quoting ’007 Patent – ECF No. 1-1 at 10 (col. 1 thermoplastic component associated with a lower melting point thermoplastic material... 2 Also, it points out that the specification says that the packaging insulation product may be 3 made “using the same thermoplastic material for the fibers, the binder fibers and the film.”** 4 SC Marketing’s argument — that the term excludes a batt comprised entirely of thermoplastic 5 or PET fibers — is not consistent with the patent: the materials are all thermoplastic or PET fibers, 6 || and nothing suggests excluding fibrous batts composed only of those fibers. The issue then is how 7 || to construe the word “primarily:” Cellulose advances “chiefly/essentially,” and SC Marketing 8 suggests “mostly.” These definitions do not add anything to “primarily.” The court construes the 9 || term as “a batt comprised primarily of [thermoplastic or PET] fibers.” Phillips, 415 F.3d at 1312— 10 13 (generally terms are given their ordinary and customary meaning from the perspective of a 1 person of ordinary skill in the art at the time of invention). 12 & 13 4. Claim Terms: “Folded without the need for creases, grooves or cut lines” and “Foldable” (Claims 1, 20, 23) i 45 The parties’ proposed constructions are as follows: a 16 Claims Terms: “Folded without the need for creases, grooves or cut lines” and “Foldable” (Claims 1, 20, 23) SC Marketing 18 Ordinary meaning “Folded without the need for creases, grooves 19 or cutlines” “The laminate is free of hinges such as 20 creases, grooves, and/or cut lines” “Foldable” “The thermoplastic film material may be bent 22 over itself so that one part of it covers another such that when released it returns to its 23 original form and is free of hinges such as creases, grooves, and/or cut lines’””?? 24 25 ||, [SOO 33 P].’s Reply — ECF No. 50 at 13 (quoting ’007 Patent —- ECF No. 1-1 at 10 (col. 2 Il. 11—34)). 27 34 14 (quoting ’007 Patent — ECF No. 1-1 at 10 (col. 2 Il. 7-8)). 28 || * Joint Claim-Constr. Statement — ECF No. 32-2 at 11 (p. 10), 20 (p. 19). 1 Cellulose contends that the context of the words —— “a laminate which can be folded without 2 || the need for creases, grooves[,] or cut lines in said laminate to facilitate folding” — suggests an 3 || ordinary meaning of the word “folded.”*° Similarly, the word “foldable” has an evident meaning 4 || (corresponding to “folded’’) and also necessarily refers to the capability of being folded (rather 5 || than the condition of being folded).*” SC Marketing counters that “can be folded” necessarily 6 || “refers to the absence of any hinges that form such creases, grooves, and/or cut lines” and 7 || “foldable” similarly requires the absence of the hinges.*® 8 SC Marketing’s proposed alteration is confusing, repeats the claim’s language, and does not 9 || help the jury understand what the claim means to a person having ordinary skill in the art. Am. 10 || Piledriving Equip., Inc. v. Geoquip, Inc., 637 F.3d 1324, 1331 (Fed. Cir. 2011); Phillips, 415 F.3d 11 at 1312-14. The patent language 1s clear: the batt is a “foldable laminate which can be folded « 12 || without the need for creases, grooves, or cut lines to facilitate folding.” The court gives the term its & 13 || plain and ordinary meaning. 3 15 5. Claim Term: “Air Laid Thermoplastic Fibrous Batt” (Claims 1, 23) A 16 The parties’ proposed constructions are as follows: s 17 Claim Term: “Air Laid Thermoplastic Fibrous Batt” (Claim 1, 23) 18 SC Marketing “A batt comprising thermoplastic fibers, Does not encompass “rigid PET waddings”*? 19 where the batt is formed using airlaying” 20 SC Marketing contends that “air laid” excludes “rigid PET waddings” because during the 21 patent prosecution, Cellulose distinguished its patent from SC Marketing’s earlier-filed patent by 22 23 24 || 36 pi>s Corrected Opening Claim-Constr. Br. — ECF No. 47 at 21-22: see supra Statement (quoting 26 claims). 37 P].’s Corrected Opening Claim-Constr. Br. — ECF No. 47 at 23-24. 27 38 Det’s Responsive Cl. Constr. Br. -— ECF No. 49 at 16-17, 20-21. 28 || *? Joint Claim-Constr. Statement — ECF No. 32-2 at 26 (p. 25). 1 focusing on the earlier patent’s use of rigid PET waddings.40 Cellulose responds that it said only 2 that it was aware of the earlier patent’s packaging and did not distinguish its product.41 3 Matthew Henderson, one of the named inventors for Cellulose’s patent, submitted a 4 declaration during the patent prosecution that he was aware of SC Marketing’s published patent 5 application: 6 I have also been made aware that (1) . . . Figs. 6–11 of the published application disclose a foldable packaging insulation for insertion into a packaging container; 7 and (2) that Fig. 3 and Par. 53 and 56 disclose an alternative packaging insulation with a PET core with PET film on both sides, although the core is made of a rigid 8 PET wadding, and thus is not resiliently collapsible or foldable like the claimed 9 subject matter of our pending patent application.42 10 Cellulose repeated this statement: 11 The pertinent subject matter of [SC Marketing’s patent application] is: (1) Figs. 6– 11 [of the published application] which disclose a foldable packaging insulation for 12 insertion into a packaging container; and (2) Fig. 3 and Par. 53 and 56 which disclose an alternative packaging insulation with a PET core with PET film on both 13 sides, although the core is made of a rigid PET wadding, and thus is not resiliently 14 collapsible or foldable.43 15 This matters, SC Marketing asserts, because its application claimed an effective priority date 16 several months earlier than the ’007 patent at issue in this litigation. It characterizes Mr. 17 Henderson’s declaration as distinguishing SC Marketing’s patent (by focusing on its use of rigid 18 PET waddings) to avoid SC Marketing’s patent being earlier, invalidating prior art.44 Cellulose 19 responds that the point of the declaration was not to distinguish prior art and instead was to point 20 out that it was not prior art because SC Marketing derived it from its prior relationship with 21 Cellulose.45 Cellulose is correct: in the next paragraphs of his declaration, Mr. Henderson 22 23 24 40 Def.’s Responsive Cl. Constr. Br. – ECF No. 49 at 22. 25 41 Pl.’s Reply – ECF No. 50 at 17. 26 42 10/09/19 Henderson Decl., Ex. E to Mitchell Decl. – ECF No. 47-6 at 232 (p. 231) (¶ 4). 43 10/10/19 Resp., Ex. E to Mitchell Decl. – ECF No. 47-6 at 247 (p. 246). 27 44 Def.’s Responsive Cl. Constr. Br. – ECF No. 49 at 22–23. ] described how Cellulose and SC Marketing had a business relationship that gave rise to the 2 || packaging products at issue in SC Marketing’s application.*° He was not distinguishing prior art. 3 SC Marketing also contends that, even without an overt disclaimer, the statements make it 4 || clear that the invention does not include the feature of “rigid PET waddings.”*’ Mr. Henderson’s 5 explanation does not arise to the level of a concession. Cf Thorner, 669 F.3d at 1366 (can 6 determine that there is a concession when the statement “makes clear that the invention does not 7 || include a particular feature”). 8 The court construes the term as “A batt comprising thermoplastic fibers, where the batt is 9 || formed using airlaying.” 10 CONCLUSION 1] This resolves ECF Nos. 32, 47, 49 and 50. a 12 IT IS SO ORDERED. 13 Dated: June 9, 2023 LAE LAUREL BEELER 15 United States Magistrate Judge 16 Z 18 19 20 21 22 23 24 25 26 27 46 10/10/19 Henderson Decl., Ex. E to Mitchell Decl. - ECF No. 47-6 at 233-34 (pp. 232-33) 5-14 28 || 4’ Def.’s Responsive Cl. Constr. Br. - ECF No. 49 at 23.