Sumner C. Rosenberg issued a Special Master’s Report and Recommendation construing terms at issue in three patents -- U.S. Patent Nos. 5,927,341
("the ‘341 patent"), 6,337,114
("the ‘114 patent"), and 6,899,832
("the ‘832 patent") -- asserted by Insituform Technologies, Inc., and INA Acquisition Corp. (collectively “ITI”) against AMerik Supplies, Inc., and Erik Nielsen who brought a third party complaint against Cosmic-Sondermaschinenbau GmbH (collectively “Defendants”). The report updates a report of October 8, 2009, in view of the completion of reexaminations of the patents-in-suit.
The Special Master reviewed additional briefing, including objections by ITI to the initial report and response thereto, and held a hearing on February 19, 2014.
The Special Master noted that his report from October 8, 2009, remained unchanged except as to construction of the term “resin absorbable material,” addressed in Section IV.C. of the Report. This was the only term addressed in the supplemental briefing.
The patents-in-suit relate to the repair of sewer line leaks in place, focusing in the area where a main line joins a branch. The patents’ solution was to apply an internal lining. Figure 7 from the ‘114 patent is pictured below.
The ‘114 patent and the ‘832 patent are both derived from an application filed September 10, 1992, by Eric Wood and were assigned to ITI. The subject of the ‘114 patent was flexible lining with flexible collars for lateral pipelines and the subject of the ‘832 patent was the installation of such lining. The ‘341 patent was based on a United Kingdom patent filed by Kevan Taylor on September 25, 1993, and then filed with the United States Patent and Trademark Office on May 9, 1994, and also assigned to ITI. The subject of this patent was the lining of Tees and Wyes in pipelines.
The Report notes that ITI suggested 95 terms needed claim construction. Defendants countered that plain and ordinary meaning should be adopted for 48 of those terms, addressing only the remaining 47 terms. Ultimately, the list was reduced to 41 terms and the parties briefed less than 41 terms and combined certain related terms in their arguments. Finally, the parties focused on a handful of critical terms at the hearing.
Only three disputed terms of note are addressed in this post.
The parties disputed whether "resin" is limited to a heat or pressure cured resin in the ‘114 and ‘832 patents. The experts for the parties agreed “that resins comprise substances that are initially liquid or viscous, but which cure (harden) after lesser or greater time periods, with the curing being caused by either outside agencies, such as heat or light, or by chemical reactions between two components of the resin (for example, epoxy).” Report at 13.
The Special Master found against Defendants' argument that "resin" should be limited to the heat cured type based on a lack of description of other curing methods known to those of ordinary skill in the art at the time and specific nonexclusive references to the heat cure type in the specifications. The Special Master also found an effort to imply a restraint from the prosecution history of the original application unpersuasive.
"Resin" was construed to mean “a substance capable of hardening after a chemical reaction or thermodynamic transformation.”
"Resin Absorbable Materials"
This term and related terms proved most time consuming and difficult to address, as the “words can be parsed separately, considered as independent terms, or reviewed in the larger context of the claims and the specifications.” Report at 15. For "absorbing" the Special Master distinguished between impregnation (forcing into by pressure) and capillary action (pulling into without pressure).
For the definition of "material" the parties diverged over whether material referred to the components comprising an absorbent or to fabric. The Special Master reviewed the record and the expert testimony and concluded that the materials referred to by the phrase required structure absent resin. However, the Special Master ultimately concluded that the required structure could be something other than a fabric.
"Resin absorbable material" was defined to mean "a structure capable of being impregnated with resin such that the resin substantially fills the voids of the fabric.” This does raise the question of why the term “fabric” is used in the definition if the structure is not required to be a fabric. The author wonders if consideration was given to substituting the word “structure” for “fabric” in this definition.
The Special Master adopted the following definition for "under pressure": “having increased force per unit area higher than atmospheric pressure.”
The full 43-page Report addressing the additional terms can be accessed here
Insituform Technologies, Inc., et al. v. Amerik Supplies, Inc., et al. v. Cosmic-Sondermaschinenbau GmbH
, No. 1:08-cv-00333-TCB (consolidated with Civil Action File No. 1:08-cv-00320), Dkt. No. 969, Special Master’s Report of Sumner C. Rosenberg filed in the U.S. District Court for the Northern District of Georgia, Atlanta Division, on March 19, 2014, in a case assigned to U.S. District Judge Timothy C. Batten, Sr.
 For more on Georgia's common practice of using Special Masters for various patent-related duties, including discovery and claim construction, see our previous post here