The opinion
IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF TENNESSEE
EASTERN DIVISION
)
PARAGON FILMS, INC., )
)
Plaintiff, )
) 1:20-cv-02440-JPM-tmp
v. )
)
BERRY GLOBAL, INC., )
)
Defendant. )
______________________________________________________________________________
CLAIM CONSTRUCTION ORDER
The case is before the Court for claim construction pursuant to Markman v. Westview
Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995), aff’d, 517 U.S. 370 (1996). A Markman
hearing was held on December 13, 2021. (ECF No. 68.) Present were Raymond Ferrera and
Joshua Cumby, counsel for Plaintiff, and Mark Hagedorn, Kyle Forgue, Adam Baldridge, and
Nicole Berkowitz, counsel for Defendant. Adam Borgman, Senior Counsel for Berry Global, Inc.,
was also present. (Id.)
I. BACKGROUND
A. Procedural Background
On June 19, 2020, Plaintiff Paragon Films, Inc. (“Paragon”) filed a Complaint alleging
Defendant Berry Global, Inc. (“Berry”) infringed the following patents: U.S. Patent No. 8,100,356
(the “’356 Patent”), U.S. Patent No. 8,221,298 (the “’298 Patent”), U.S. Patent No. 8,475,349 (the
“’349 Patent”), and U.S. Patent No. 8,777,829 (the “’829 Patent”). (ECF No. 1 ¶ 19.) Paragon
filed an Amended Complaint on August 14, 2020. (ECF No. 26.) The Court denied Berry’s
Motion to Dismiss Plaintiff’s Amended Complaint (ECF No. 30) on November 24, 2020. (ECF
No. 42.) Berry filed its Answer and Counterclaims on December 8, 2020. (ECF No. 44.)
Paragon is an Oklahoma corporation with its principal place of business in Broken Arrow,
Oklahoma. (ECF No. 26 ¶ 1.) Berry is a Delaware corporation with a manufacturing facility
located in Jackson, Tennessee. (Id. ¶ 2.) Paragon and Berry are competitors in the high-
performance stretch film products market. (Id. ¶ 19.) Paragon alleges that Berry’s FORTITUDE
product infringes one or more claims of each of the patents-in-suit. (Id. ¶ 41.)
B. The Patents-in-Suit
The ’356 Patent is entitled “Apparatus and Method for Winding Film onto a Film Roll.”
The ’298 Patent is entitled “Apparatus and Method for Folding Film Edges.” The ’349 and ’829
Patents are both entitled “Method for Folding Film Edges.”
The ’356 Patent primarily discloses “[a]n in-process apparatus for oscillating and winding
film onto a film roll” that “comprises the steps of providing a film, a retractable idler roll, and a
film roll separated from the retractable idler roll by an air gap that remains constant as the film is
wound onto the film roll.” (’356 Patent, col. 2 ll. 18–19, 25–28.)
The ’298, ’349, and ’829 Patents all share the same specification. These patents primarily
disclose methods and apparatuses “for folding the edges of a film during the production process.”
(’349 Patent, col. 2 ll. 4–5; ’298 Patent, col. 1 ll. 66–67; ’829 Patent, col. 1 ll. 65–66.) “Edge folds
may increase the ease of use and reduce waste by making the film less susceptible to failure due
to tears, rough handling, or excessive stretching.” (’349 Patent, col. 2 ll. 64–67; ’298 Patent, col.
2 ll. 60–63; ’829 Patent, col. 2 ll. 59–62.)
II. APPLICABLE LEGAL STANDARD
“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to
which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312
(Fed. Cir. 2005) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d
1111, 1115 (Fed. Cir. 2004)). Courts, as a matter of law, must construe the claims of a patent in
order to ascertain precisely what it is that is patented. See id.; see also Markman v. Westview
Instruments, Inc., 517 U.S. 370, 387 (1996).
In engaging in that exercise, the words in the claims are “generally given their ordinary
and customary meaning,” that is, “the meaning that the term would have to a person of ordinary
skill in the art in question at the time of the invention.” Phillips, 415 F.3d at 1312–13 (internal
citations and quotation marks omitted). This ordinary and customary meaning “may be readily
apparent even to lay judges,” and where that is the case, claim construction involves “little more
than the application of the widely accepted meaning of commonly understood
words.” Id. at 1314 (citing Brown v. 3M, 265 F.3d 1349, 1352 (Fed. Cir. 2001)).
However, as the ordinary and customary meaning is often not immediately apparent, courts
must look to other sources of evidence—“the words of the claims themselves, the remainder of the
specification, the prosecution history, and extrinsic evidence concerning relevant scientific
principles, the meaning of technical terms, and the state of the art.” Id. (citing Innova, 381 F.3d at
1116). In Phillips, the Federal Circuit provided guidance on the relative weight given to evidence
from these various sources. Id.
First, “the claims themselves provide substantial guidance as to the meaning of particular
claim terms,” particularly the “context in which a term is used in the asserted claim.” Id. But
because claims are also part of a “fully integrated written instrument,” they must “be read in view
of the specification, of which they are a part.” Markman, 52 F.3d at 978, 979 (citations omitted).
As the Federal Circuit has stressed, “[a] patent’s specification provides necessary context for
understanding the claims, and ‘is always highly relevant to the claim construction
analysis.’” Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1288 (Fed. Cir. 2009) (en banc in part)
(quoting Phillips, 415 F.3d at 1315). Further, “sometimes the specification offers practically
incontrovertible directions about claim meaning,” as when inventors “act as their own
lexicographers and give a specialized definition of claim terms,” or “intentionally disclaim, or
disavow, subject matter that would otherwise fall within the scope of the claim.” Id. (internal
citations and quotation marks omitted). But the Court must take care neither “to import limitations
into the claims from the specification,” nor to allow “the claims to enlarge what is patented beyond
what the inventor has described as the invention.” Id. at 1288 (internal citations and quotation
marks omitted). In addition, “a particular embodiment appearing in the written description may
not be read into a claim when the claim language is broader than the embodiment.” Resonate Inc.
v. Alteon Websystems, Inc., 338 F.3d 1360, 1364–65 (Fed. Cir. 2003).
The prosecution history of the patent is the other type of “intrinsic evidence,” along with
the specification, that courts consider when determining the meaning of disputed terms. Phillips,
415 F.3d at 1317.
Finally, courts may consider extrinsic evidence—that is, “all evidence external to the
patent and prosecution history, including expert and inventor testimony, dictionaries, and learned
treatises.” Id. (quoting Markman, 52 F.3d at 980). Such evidence, however, is “less significant
than the intrinsic record in determining the legally operative meaning of claim
language.” Phillips, 415 F.3d at 1317 (internal quotations and citations omitted).
In engaging in a Markman analysis, a court is not required to “repeat or restate every claim
term in order to comply with the ruling that claim construction is for the court.” U.S. Surgical
Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997). Rather, “[c]laim construction is a
matter of resolution of disputed meanings and technical scope, to clarify and when necessary to
explain what the patentee covered by the claims, for use in the determination of infringement.” Id.
III. TERMS AT ISSUE
A. Summary of Parties’ Positions
Paragon proposes plain and ordinary meaning for a fair amount of the terms, relying largely
on the patents’ specifications along with the prosecution histories and some extrinsic evidence
such as dictionary definitions. (See generally ECF No. 62.) Paragon argues that Berry’s proposed
constructions are not consistent with the patents’ history nor with what a PHOSITA would
understand as the claim limitations. (ECF No. 65 at PageID 2912–13.)
Conversely, Berry contends that Paragon’s constructions largely ignore the prosecution
histories in order to give the claims a broader construction. (ECF No. 66 at PageID 2940.) Further,
Berry asserts that Paragon is improperly adding limitations from the specification into the claims.
(Id. at PageID 2942.)
B. Procedural Background
Paragon and Berry filed Opening Claim Construction Briefs (ECF Nos. 62 and 63,
respectively) on October 22, 2021. On November 19, 2021, Paragon and Berry filed Responsive
Claim Construction Briefs. (ECF Nos. 65 and 66, respectively.) The Parties jointly filed a claim
construction and prehearing statement on December 3, 2021. (ECF No. 67.) A hearing took place
on December 13, 2021. (ECF No. 68.)
At the hearing, both Parties provided alternative constructions for some of the terms in
dispute. (See generally Hearing Transcript, ECF No. 69.) The Court has adopted or utilized the
Parties’ suggested constructions where possible.
C. Agreed-Upon Terms
None.
D. Overview of Disputed Claim Terms
The Parties do not fully agree on which terms require claim construction. Based on review
of the briefing, the Court will construe the following terms:
1. “idler roll” and “retractable idler roll”
2. “folding guide”
3. “folding rod”
4. “air gap” and “maintains an air gap”
5. “plurality of folding guides that are positioned” and “positioning a plurality of folding
guides”
6. “each folding guide . . . induces two folds” and “inducing two folds with each folding
guide”
7. “adjacent”
8. “in-process”
9. “oscillating mechanism”
10. “moves vertically away”
11. “the film is wound onto the roll horizontally”
12. “wherein each folding guide separates adjacent sections of film . . .”
The Court will also briefly address the remaining terms, which can be construed in accordance
with the guidance provided for the twelve terms listed above.
1) “idler roll” and “retractable idler roll”
Paragon’s Proposed Berry’s Proposed
Disputed Term Court’s Construction
Construction Construction
An approximately A freely rotating A freely rotating
cylindrically shaped cylinder that is rotated cylinder that is rotated
“idler roll” material handling solely by the film via solely by the film via
component that film-to-roller traction film-to-roller traction
conveys stretch film rather than by a motor, rather than by a motor,
through a machine belt or other external belt or other external
process power source power source
An approximately A freely rotating
cylindrically shaped A freely rotating cylinder that is rotated
material handling cylinder that is rotated solely by the film via
component that solely by the film via film-to-roller traction
conveys stretch film film-to-roller traction rather than by a motor,
“retractable idler
through a machine rather than by a motor, belt or other external
roll”
process that backs belt or other external power source that
away from a film roll power source and backs away from a film
as the film on a roll which is movable roll as the film on a roll
thickens during relative to the film roll thickens during
winding winding
The term “idler roll” appears in claim 1 of the ’298, ’349, and ’829 Patents. The term
“retractable idler roll” appears in claim 1 of the ’356 Patent.
The key portion in dispute is whether the idler roll is a cylinder that is rotated solely by the
film or could be rotated by other means. Paragon contends that Berry’s construction which
includes “freely rotating” and “rotated solely by the film” “is inconsistent with the specifications
of the patents-in-suit, which state that the film ‘moves over’ the idler rolls but do not include
language limiting their rotation.” (ECF No. 62 at PageID 849.) Berry, however, contends that
“[a] POSA would understand an ‘idler’ roll to be different than other types of rolls.” (ECF No. 63
at PageID 1140.) Berry also asserts that “Paragon ignores the term ‘idler’ and attempts, yet again,
to improperly introduce ‘stretch’ with its proposed construction.” (Id.)
In support of its construction that an idler roll is not necessarily freely rotating, Paragon
cites to the specification: “A mechanical system may be used to control the retractable idler roll.”
(ECF No. 65 at PageID 2920.) (citing ’356 Patent, 3:62–63.) Paragon also cites to its 3 Meter
Stretch Film Line Specification (ECF No. 62-3),1 which refers to “driven idler rolls.” (ECF No.
65 at PageID 2921.)
Berry argues that Paragon is attempting to “re-draft the claims to render ‘idler’ totally
superfluous.” (ECF No. 66 at PageID 2945.) Berry asserts that Paragon’s cited support is an
“internal Paragon document (i.e., not public) . . . dated 2014 (several years after the priority date
of the ’356 patent), and is purposefully drafted for Paragon.” (Id. at PageID 2946.) In support of
its construction, Berry cites to multiple extrinsic sources that indicate that a PHOSITA would
“distinguish idler rolls from externally driven rolls.” (Id.) (citing ECF Nos. 63-24; 63-25; 63-13;
63-27; and 63-18.)
Overall, much of the extrinsic evidence suggests that a PHOSITA at the time of the
invention would understand an idler roll to not be driven by a motor or other power source. (See,
e.g., ECF No. 63-24 at PageID 2769.) (“Idler Roller – A roller which is driven by the web rather
than by an electric motor, belt or other external means.”) Further, the intrinsic evidence does not
indicate that a different meaning should be used, and further indicates that the word “idler” must
have some meaning because in the prosecution history of the ’356 Patent, the applicant uses the
term “roller” without the word “idler” before it, indicating that an idler roll cannot refer to all types
of rolls or rollers. (ECF No. 63-5 at PageID 1337.) (“Both of the citations above and Figure 11
describe a roller in close contact with the core. . . . In contrast, Applicant’s retractable idler roll
never contacts the film roll.”) “A claim construction that gives meaning to all the terms of the
claim is preferred over one that does not do so.” Merck & Co., Inc. v. Teva Pharms. USA, Inc.,
395 F.3d 1364, 1372 (Fed. Cir. 2005). As a result, the Court agrees with Berry’s construction that
1 There is a dispute between the Parties about whether this source was properly disclosed. (See ECF No.
66 at PageID 2938.)
an idler roll is “a freely rotating cylinder that is rotated solely by the film via film-to-roller traction
rather than by a motor, belt or other external power source.”
As for the retractable idler roll, the specification of the ’356 Patent states that “[t]he film
430 may pass over the retractable idler roll 410, which moves away from the film roll.” ’356
Patent col. 3 ll. 49–50. This definition is further supported by the ’356 Patent’s prosecution history,
which provides the definition as the Applicant understood it: “[T]he retractable idler roll moves
away from the film roll in order to maintain a constant distance between the retractable idler roll
and the surface of the film roll.” (ECF No. 63-5 at PageID 1337.) Additionally, the plain and
ordinary meaning of “retractable” would support an object that is able to back away from or into
another object. Thus, the intrinsic evidence and the ordinary meaning of “retractable” support
Paragon’s proposal that the retractable idler roll “backs away from a film roll as the film on a roll
thickens during winding.”
2) “folding guide”
Paragon’s Proposed Berry’s Proposed Court’s
Disputed Term
Construction Construction Construction
Indefinite, subject to
35 U.S.C. § 112 ¶ 6;
alternatively:
Structure: Straight Structure: A rod
cylindrical rod having Function: Defined by
A device or assembly a uniform diameter of the clauses of the
“folding guide” that initiates the folding approximately 11/16 respective
of a film edge inch along its length independent claim in
Function: Defined by which the term
the clauses of the appears as construed
respective independent in this Order
claim in which the
term appears as
construed below
The claim term “folding guide” appears in claim 1 of the ’298, ’349, and ’829 Patents. The
primary dispute in this term is whether it is subject to 35 U.S.C. § 112 ¶ 6. Paragon asserts that
because the claim does not have the term “means,” it is “afforded a presumption against applying
Section 112(f).” (ECF No. 62 at PageID 850.) Instead, Paragon contends that its construction
“most naturally aligns with the patents’ description of the invention.” (Id.) Berry, however,
contends that the term “is generic and does not convey to a POSA any particular structure.” (ECF
No. 63 at PageID 1141.) In support of its proposed structure, Berry asserts that the application
and specifications indicate that its proposed structure is necessary to create the edge folds. (Id.)
Paragon, in support of its construction, cites to Figures 2 and 3 in the ’298 Patent and its
specification (2:29–30): “with the folding guide assembly comprised of folding rods.” (ECF No.
65 at PageID 2925.) Paragon also cites to the following sentence in the specification of the ’298,
’349, and ’829 Patents: “The folding guide assemblies 235 may be comprised of a plurality of
folding rods 240-245, which may be placed in the slits 270 between sections of film 210 to separate
the sections of film 210.” (Id.) Paragon asserts that Berry’s proposed structure does not have
support in the specifications: “they make no mention of ‘straight cylindrical rods’ of any diameter,
much less of ‘uniform diameter.’” (Id. at PageID 2925–26.)
Berry, in support of its contention that § 112 applies, asserts that “‘guide’ is a nonce term
that does not convey any defined structure to a POSA, and the remainder of the asserted claims
solely describe the function thereof rather than any structure for accomplishing the function.”
(ECF No. 66 at PageID 2951.) Berry also states that “Paragon’s opening brief also classifies
‘guide’ as a verb (i.e., function) rather than as a noun (suggesting structure)” and that “Paragon’s
proposed construction also confirms that treatment under §112(¶6) is required because the
generically recited ‘device or assembly’ is only defined in terms of its proposed function: initiates
the folding of a film edge.” (Id. at PageID 2952.) As for Berry’s proposed structure, Berry
contends that “[t]he only disclosed structure that ‘produces two edge folds’ (like that of the claimed
‘folding guide’) is a ‘rod’ (e.g., items 240-45).” (Id.) It also contends that “Paragon also admits
that ‘folding guide’ should be construed as ‘folding rod’ in its opening brief.” (Id.) Further, Berry
contends that the additional terms that “Paragon seeks to introduce now with its proposed
construction (‘assembly’ and ‘initiate’) were deleted during prosecution.” (Id.)
Pre-AIA, title 35, section 112, paragraph 6 of the United States Code provides that:
An element in a claim for a combination may be expressed as a means or step for
performing a specified function without the recital of structure, material, or acts in
support thereof, and such claim shall be construed to cover the corresponding
structure, material, or acts described in the specification and equivalents thereof.
35 U.S.C. § 112 ¶ 6. “Through use of means-plus-function limitations, patent applicants are
allowed to claim an element of a combination functionally, without reciting structures for
performing those functions.” Apex Inc. v. Raritan Computer, Inc., 325 F.3d 1364, 1371 (Fed. Cir.
2003) (citing Envirco Corp. v. Clestra Cleanroom, Inc., 209 F.3d 1360, 1364 (Fed. Cir. 2000)).
This provision strikes the following balance:
allowing patentees to express a claim limitation by reciting a function to be
performed rather than by reciting structure for performing that function, while
placing specific constraints on how such a limitation is to be construed, namely, by
restricting the scope of coverage to only the structure, materials, or acts described
in the specification as corresponding to the claimed function and equivalents
thereof.
Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347 (Fed. Cir. 2015). “When a claim term
lacks the word ‘means,’ the presumption can be overcome and § 112, para. 6 will apply if the
challenger demonstrates that the claim term fails to ‘recite sufficiently definite structure’ or else
recites ‘function without reciting sufficient structure for performing that function.’” Id. at 1349
(quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)).
Here, the Court finds that 112 U.S.C. § 112 ¶ 6 applies because the claim term “folding
guide” as well as Paragon’s proposed construction of “a device or assembly that initiates the
folding of a film edge” show that the term is “reciting a function to be performed rather than []
reciting structure for performing that function.” See Williamson, 792 F.3d at 1347. As a result,
the Court must look to the specification to find the corresponding structure. The specification
provides the following structure for the “folding guides”:
The folding guide assemblies 235 may be comprised of a plurality of folding rods
240-245, which may be placed in the slits 270 between sections of film 210 to
separate the sections of film 210. . . .
The folding rods 240-245 may vary from 3/8 inch to 1 inch in diameter, with a
preferred diameter of approximately 11/16 inch. The folding rods 240-245 may
have uniform diameter throughout their length. As an alternative, the portions of
the folding rods 240-245 that contact the film 210 may have a smaller diameter or
narrow to a point to further aid in separating the sections of film.
’298 Patent col. 3 ll. 40–43, 48–54. No other structures for folding guides are disclosed in the
specification shared by the ’298, ’349, and ’829 Patents. As a result, the Court finds the structure
to be a rod. The Court does not adopt Berry’s other structural suggestions because, as quoted
above, the specification discloses a range of diameters rather than only 11/16-inch diameters and
also discloses rods where the diameter is not a constant length, and it does not specifically say the
rods must be “cylindrical.”
3) “folding rod”
Paragon’s Proposed Berry’s Proposed Court’s
Disputed Term
Construction Construction Construction
A straight cylindrical
A rod that guides stretch rod having a uniform
“folding rod” film during the folding diameter of A rod
process approximately 11/16
inch along its length
The term “folding rod” appears in dependent claims 2–4 of the ’298, ’349, and ’829 Patents.
The Parties primarily disagree on whether there is a diameter limitation in this claim term. (See
ECF No. 62 at PageID 851–52; ECF No. 63 at PageID 1149–50.) As discussed above, the
specification for these patents discloses a range of diameters as well as embodiments with a
uniform diameter and embodiments that do not have a uniform diameter. As a result, the Court
will not impose Berry’s proposed limitation in this term.
4) “air gap” and “maintains an air gap”
Paragon’s Proposed Berry’s Proposed Court’s
Disputed Term
Construction Construction Construction
Indefinite;
A space or separation A constant non-zero
alternatively:
between the retractable distance between the
“air gap”
idler roll and a wound Constant non-zero retractable idler roll
roll of stretch film distance and the film roll
Indefinite;
alternatively:
No construction needed Does not contact the
“maintains an air for entire phrase / plain Does not contact the film roll and keeps a
gap” and ordinary meaning film roll and keeps a constant non-zero
for “maintains” constant non-zero distance
distance
This term is in claim 1 of the ’356 Patent. Paragon contends that this term does not need
construction but does propose construction for “air gap.” (ECF No. 62 at PageID 852, 865–66.)
Paragon’s proposed construction for “air gap” is “a space or separation between the retractable
idler roll and a wound roll of stretch film.” (ECF No. 62 at PageID 852.) In support of this
construction, Paragon cites to the specification:
The separation rate may maintain a constant distance between the retractable idler
roll 410 and the surface of the film roll 420, described as an air gap 440. The air
gap 440 may be consistently maintained throughout the winding process in order
to trap air between the layers of film 430 as they are wound onto the film roll 420.
The air gap 440 may be relatively short in order to maintain the appropriate level
of air entrapment and to ensure proper oscillation of the film 430. For example, the
air gap 440 may range from 0 to 5 inches, with a preferred distance of
approximately one inch.
(Id.) (citing ’356 Patent, col. 3, ll. 51–61.) For “maintains,” Paragon contends that no construction
is needed because the plain and ordinary meaning is clear. (Id. at PageID 866.)
Berry contends that Paragon “disclaimed any claim scope purporting to cover an ‘air gap’
value of zero” because “the term was added to distinguish from the prior art showing a ‘roller in
close contact with the core. As a result, the alleged air gap does not exist.’” (ECF No. 63 at
PageID 1137.) (citing ECF No. 63-5 at PageID 1248, 1332, 1335–37.) Berry contends that its
“proposed construction is consistent with the plain and ordinary meaning, the above-referenced
amendment and disclaimer, and with the specification and figures of the ’356 patent.” (Id.) Berry
argues that Paragon’s proposed construction . . . would cover the Salzsauler prior art Paragon
specifically distinguished.” (Id. at PageID 1138.) Berry contends that “[a]ny air ‘entrapped’
between layers of film on a film roll is described separately from the spatial ‘air gap’ between
rolls.” (Id.) (citing ’356 Patent, col. 3 ll. 54–56.) In its Response Brief, Berry asserts that “the
parties appear to at least agree that claim 1 of the ’356 patent requires ‘separation,’” and that
“Paragon’s cited support used the term ‘distance’ like in Berry’s proper construction.” (ECF No.
66 at PageID 2943–44.)
At the hearing, the Parties both indicated that a meaning of “constant non-zero distance”
would be acceptable for purposes of the claim terms “air gap” and “maintains an air gap.” (Hearing
Transcript, ECF No. 69 at PageID 3118–19.) Further, this meaning is supported by the
specification and prosecution history, as discussed above. As a result, the Court adopts this
meaning for the disputed term.
5) “Plurality of folding guides that are positioned” / “positioning a plurality of
folding guides”
Paragon’s Proposed Berry’s Proposed Court’s
Disputed Term
Construction Construction Construction
Indefinite, subject to
35 U.S.C. § 112 ¶ 6;
alternatively:
Two or more devices or Structure: plurality of
assemblies that initiate straight cylindrical
the folding of a film rods having a uniform
edge and are arranged diameter of
between a first approximately 11/16
approximately inch along their
cylindrically shaped lengths that are
material handling positioned between the
component that conveys first idler roll and the
stretch film through a second idler roll at a
“plurality of machine process and a guide distance
folding guides second approximately approximately 2/3 of
that are cylindrically shaped the first distance from Plurality of rods that
positioned material handling the first idler roll and are positioned
between the first component that conveys at a guide angle of between the first idler
idler roll and the stretch film through a approximately 45° / roll and the second
second idler roll” machine process” / positioning a plurality idler roll /
/ “positioning a “arranging two or more of straight cylindrical positioning a plurality
plurality of devices or assemblies rods having a uniform of rods between the
folding guides that initiate the folding diameter of first idler roll and the
between the first of a film edge between a approximately 11/16 second idler roll
idler roll and the first approximately inch along their
second idler roll” cylindrically shaped lengths between the
material handling first idler roll and the
component that conveys second idler roll at a
stretch film through a guide distance
machine process and a approximately 2/3
second approximately distance from the first
cylindrically shaped idler roll and at a
material handling guide angle of
component that conveys approximately 45°
stretch film through a
machine process Function: Defined by
the wherein clause of
the respective
independent claim as
construed herein.
This disputed claim term appears in claim 1 of the ’298, ’349, and ’829 Patents. The Parties
disagree as to whether section 112 ¶ 6 applies. The next main dispute is whether the construction
should take on Berry’s proposed specific distances and angles.
Paragon contends that because the claim term lacks the word “means,” the presumption
against applying § 112 ¶ 6 applies. (ECF No. 62 at PageID 854.) Berry contends, however, that
this term is indefinite for the same reason that “folding guide” is indefinite. (ECF No. 63 at PageID
1144.)
In support of its contention for the specific positioning and angles, Berry cites to the
provisional application and specification at col. 3 ll. 36–39, 55–57, where “[t]he ‘placement’ (i.e.,
position and angle relative to the idler rolls) of the folding guides (i.e., folding rods) is described
as a ‘critical’ and ‘key’ factor in achieving and maintaining edge folds.” (ECF No. 63 at PageID
1144.) Berry cites to the preferred embodiment in the specification and the prosecution history
(ECF No. 63-6 at PageID 1540–42) for the specific values it proposes. (ECF No. 63 at PageID
1144.)
In its response brief, Paragon contends that Berry’s construction “incorrectly includes a
limitation of ‘a guide distance approximately 2/3 of the first distance from the first idler roll and
at a guide angle of approximately 45°.’” (ECF No. 65 at PageID 2927–28.) Berry asserts in its
response brief that “Paragon again ignores language from the specification and prosecution history
in pursuing its construction of this disputed term.” (ECF No. 66 at PageID 2958.) Berry points to
the prosecution history where Paragon used Berry’s proposed limitations to overcome the prior art
for the ’298 Patent. (ECF No. 63-6 at PageID 1540–42.)
As discussed above, the term “folding guides” is subject to 35 U.S.C. § 112 ¶ 6. The Court
applies its construction of that term here. The positioning of those folding guides, however, is not
means-plus-function claiming, so the Court need not look to the specification for further
corresponding structure. What must be determined instead is whether the specific guide distances
and angles proposed by Berry are part of the claim limitations because other configurations were
disclaimed in the prosecution history. The prosecution provides the following on how the position
of these folding guides is different from the prior art:
Also unlike Ranger’s folding members, Applicant’s folding guides are set at a very
specific oblique angle:
The guide angle 290 between the film 210 and the folding rods 240-245, measured
with the folding rods 240-245 leaning toward the first idler roll 220, may vary from
20° to 90°, with a preferred angle of approximately 45° [paragraph 0025].
(ECF No. 63-6 at PageID 1540–42.) (brackets in original.) The Applicant did not solely rely on
an angle of 45° to distinguish from the prior art, and thus it would be inappropriate to introduce
such a limitation here. Similarly, there is no disclosure that the folding guide must be
approximately 2/3 distance from the first idler roll. As a result, the Court adopts the construction
“plurality of rods that are positioned between the first idler roll and the second idler roll” and
“positioning a plurality of rods between the first idler roll and the second idler roll” for this term.
6) “each folding guide . . . induces two folds” and “inducing two folds with each
folding guide”
Paragon’s Proposed Berry’s Proposed Court’s
Disputed Term
Construction Construction Construction
Indefinite, subject to
Each device or assembly 35 U.S.C. § 112 ¶ 6; Each rod that initiates
that initiates the folding alternatively: the folding of a film
“each folding of a film edge . . . Each rod is inserted edge . . . initiates
guide . . . induces initiates formation of into a separate formation of two
two folds” / horizontal folds / longitudinal slit that horizontal folds /
“inducing two Causing the formation creates two adjacent Causing the
folds with each of two folds with each edges of two adjacent formation of two
folding guide” device or assembly that sections of film and folds with each rod
initiates the folding of a individually contacts that initiates the
film edge” the two adjacent edges folding of a film edge
of the two adjacent
sections of film
thereby introducing
two folds (one in each
of the two adjacent
sections of film)
This term is in claim 1 of the ’298, ’349, and ’829 Patents. The primary dispute is whether
this is a means-plus-function term. Paragon holds that, because the term does not contain the word
“means,” § 112 ¶ 6 should not apply. (ECF No. 62 at PageID 856–57.) Berry holds that Paragon’s
proposed construction is invalid for lack of written description and enablement. (ECF No. 63 at
PageID 1148.)
In support of its construction, Paragon cites to the patent specification and a dictionary
definition of “induce.” (ECF No. 62 at PageID 856.) Overall, Paragon proposes that the terms be
given their plain and ordinary meaning. (ECF No. 65 at PageID 2929.) Berry, on the other hand,
argues that the prosecution history requires that this term describes “a single rod touching two
adjacent film edges created by a single slit,” and that Paragon’s proposed construction “appears to
be an attempt to unreasonably enlarge the scope of the asserted claims.” (ECF No. 63 at PageID
1148.) (citing ECF No. 63-6 at PageID 1482–83; 1505–06; 1540–42.) Berry also contends that
“[t]here does appear to be agreement that after folds are started by the folding guides (i.e., rods)
there is no further structure contacting/interacting with the film edges, thus the folds complete
solely due to the cling of the film material (e.g., without any external contact (intervention)).”
(ECF No. 66 at PageID 2956.)
The Court finds that plain and ordinary meaning of inducing two folds is sufficient after
applying the Court’s prior construction for folding guides. Thus, the Court’s construction largely
adopts Paragon’s proposal for “inducing” while including structure for the term “folding guide,”
and construes this term to mean “each rod that initiates the folding of a film edge . . . initiates
formation of two horizontal folds” or “causing the formation of two folds with each rod that
initiates the folding of a film edge.”
7) “adjacent”
Paragon’s Proposed Berry’s Proposed Court’s
Disputed Term
Construction Construction Construction
No construction
needed; alternatively:
“adjacent” Not distant; nearby Next to
Adjoining, abutting, or
bordering
This term appears in claim 1 of the ’298, ’349, ’829 Patents. Paragon cites to a dictionary
definition in support of its proposed meaning. (ECF No. 62 at PageID 857.) Paragon disagrees
with Berry’s proposed synonyms because “the inventor used the word ‘adjacent,’ not ‘adjoining,’
and the Court ‘must consider the word that the inventor actually chose and use the definitions of
that term that are consistent with the written description.’” (Id. at PageID 858.) (citing Int’l
Rectifier Corp. v. IXYS Corp., 361 F.3d 1363, 1374 (Fed. Cir. 2004).)
Berry, however, contends that the prosecution history and specification support its
construction: “[T]he specifications certainly do not describe any embodiment where adjacent
sections of film do not share a common longitudinal slit creating adjacent edges of the adjacent
sections of film.” (ECF No. 66 at PageID 2949.) Berry further asserts that “Paragon’s proposal
also raises indefiniteness issues because the public cannot determine what amount of distance is
‘nearby’ for purposes of avoiding infringement of the asserted claims.” (Id. at PageID 2950.)
At the hearing, the Court indicated that “next to” would be the most understandable
construction beyond plain and ordinary meaning. (Hearing Transcript, ECF No. 69 at PageID
3141.) Paragon agreed that “not distant” did not help clarify the term. (Id. at PageID 3142.) The
Court construes the term “adjacent” as “next to” in order to clarify its plain and ordinary meaning.
8) “in-process”
Paragon’s Proposed Berry’s Proposed Court’s
Disputed Term
Construction Construction Construction
The preamble is non-
In-line, or in a single limiting; alternatively: The preamble is non-
“in-process”
continuous process In a film processing limiting
operation
This term is in the preamble of claim 1 of all the patents-in-suit. Paragon cites to language
in the abstract and specification that state that the method or apparatus is “in-process.” (ECF No.
62 at PageID 860.) Paragon asserts that “[h]ere, the preambles are both necessary to give meaning
to claim 1 of each patent-in-suit and recite additional structure underscored as important by the
patents’ specifications” and that “the claimed in-process methods and apparatuses are an
improvement on those disclosed in the prior art.” (Id. at PageID 861.) Similarly, Paragon contends
that Berry’s alternative proposed construction “would undermine the value of these important
improvements and sap the patents of their vitality.” (Id. at PageID 862.) Paragon also points to
portions of the prosecution history where “production of a film roll in-process was also relied on
during prosecution to distinguish prior art.” (ECF No. 65 at PageID 2917.) (citing ECF No. 62-2
at PageID 948; ECF No. 62-5 at PageID 1091; ECF No. 62-6 at PageID 1101; and ECF No. 62-7
at PageID 1111.) Paragon asserts that “[b]ecause the preambles distinguish the inventions claimed
in the patents-in-suit from the prior art, they are ‘transformed’ into a claim limitation.” (Id. at
PageID 2918.)
Berry, however, asserts that “[p]reambles are generally non-limiting,” and “[h]ere, the
preambles (1) provide no antecedent basis for any later claim term, (2) are not limited by the
specification, and (3) were not relied upon during prosecution to distinguish prior art.” (ECF No.
63 at PageID 1129.) Berry also states that “[t]he non-limiting nature was admitted by Paragon
during prosecution of the ’829 patent.” (Id. at PageID 1130.) (citing ECF No. 63-9 at PageID
2020–26.) Berry asserts that its alternative construction “is appropriate because it does not
introduce further uncertainty. The Asserted Patents state film processing operations (e.g., ‘the
steps 100 for producing [cast] film in-process’) of which ‘steps may be performed in a different
order, and one or more steps may be eliminated without departing from the scope of the present
disclosure.’” (Id. at PageID 1131.) (emphasis and formatting in original.) (citing ’298 Patent, col.
3 ll. 6–9 and ’356 Patent, col. 3 ll. 14–16.) Berry contends that “the claims remain complete even
without this term, showing that it provides no limitation.” (ECF No. 66 at PageID 2960.)
“Generally, the preamble does not limit the claims.” Allen Eng’g Corp. v. Bartell Indus.,
Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). The Federal Circuit has provided the following
principles to aid in determining whether the preamble is limiting:
[T]he preamble may be construed as limiting “if it recites essential structure or
steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina
Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002),
quoting Pitney Bowes, Inc. v. Hewlett–Packard Co., 182 F.3d 1298, 1305 (Fed. Cir.
1999). A preamble is not regarded as limiting, however, “when the claim body
describes a structurally complete invention such that deletion of the preamble
phrase does not affect the structure or steps of the claimed invention.” Catalina,
289 F.3d at 809. If the preamble “is reasonably susceptible to being construed to
be merely duplicative of the limitations in the body of the claim (and was not clearly
added to overcome a [prior art] rejection), we do not construe it to be a separate
limitation.” Symantec Corp. v. Computer Assocs. Int’l, Inc., 522 F.3d 1279, 1288–
89 (Fed. Cir. 2008). We have held that the preamble has no separate limiting effect
if, for example, “the preamble merely gives a descriptive name to the set of
limitations in the body of the claim that completely set forth the invention.” IMS
Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434–35 (Fed. Cir. 2000).
Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358–59 (Fed. Cir. 2010).
While each of the patent applications mentions the need “for methods, systems, and devices
which can efficiently fold the edges of the film in-process” (see ECF No. 62-2 at PageID 948; ECF
No. 62-5 at PageID 1091; ECF No. 62-6 at PageID 1101; and ECF No. 62-7 at PageID 1111),
Paragon does not provide any support that the “in-process” language in the preamble was
necessary to overcome prior art, as the cited prosecution history support was provided in the initial
application rather than to overcome an Examiner’s rejection. (See ECF No. 62 at PageID 860–62;
ECF No. 65 at PageID 2915–18.) Further, it is unclear how the claims would be incomplete
without such a limitation, and “in-process” appears to “merely give[] a descriptive name to the set
of limitations in the body of the claim.” See IMS Tech., 206 F.3d at 1434. As a result, the Court
finds that the preamble for claim 1 in each of the patents-in-suit is nonlimiting.
9) “oscillating mechanism”
Paragon’s Proposed Berry’s Proposed Court’s
Disputed Term
Construction Construction Construction
Indefinite, subject to
35 U.S.C. § 112, ¶ 6.
This limitation renders Structure: A frame
A mechanism that
claim 1 indefinite as
“oscillating oscillates stretch film
no corresponding Function: Moves
mechanism” after folded edges have
structure is disclosed back and forth
been induced
in the description of between two points
the alleged invention
in the ’356 Patent.
This term is in claim 1 of the ’356 Patent. The parties dispute whether this is a means-
plus-function claim.
Paragon asserts that, because the term lacks the word “means,” the presumption against §
112 ¶ 6 applies. (ECF No. 65 at PageID 2919.) Paragon uses the following from the specification
in support of its construction: “The present disclosure may use any conventional oscillating
mechanism to oscillate the film. For example, the oscillating mechanism may be a frame that
moves back and forth across a set distance in a controlled manner at a specified rate.” ’356 Patent,
col. 3 ll. 18–24.
Berry, on the other hand, contends that “claim 1 merely describes the ‘oscillating
mechanism’ in terms of the function: oscillates the film for an oscillation rate at an oscillation
distance.” (ECF No. 63 at PageID 1132.) Berry also asserts that the statement “‘may use any
conventional oscillating mechanism to oscillate the film’ . . . is insufficient under § 112, ¶6” to
provide structure. (Id.) Berry further contends that “Paragon’s construction also improperly
attempts to read in limitations from the specification by adding ‘stretch’ despite claim 1 simply
reciting ‘film’ without any limitation on the type of film.” (Id. at PageID 1133.)
Much like with “folding guides,” 112 U.S.C. § 112 ¶ 6 applies here because the claim term
“oscillating mechanism” as well as Paragon’s proposed construction of “a mechanism that
oscillates stretch film” show that the term is “reciting a function to be performed rather than []
reciting structure for performing that function.” See Williamson, 792 F.3d at 1347. As a result,
the Court must look to the specification to find the corresponding structure. The specification
provides the following embodiments for the oscillating mechanism:
The present disclosure may use any conventional oscillating mechanism to oscillate
the film. For example, the oscillating mechanism may be a frame that moves back
and forth across a set distance in a controlled manner at a specified rate. The film
may be supported by and move with the oscillating frame.
’356 Patent, col. 3 ll. 19–25. The phrase “any conventional oscillating mechanism” fails to provide
sufficient structure. However, the structure of “a frame that moves back and forth across a set
distance in a controlled manner at a specified rate” connotes a specific structure, and the Court will
construe the term likewise. The Court does not find the means-plus-function term to be indefinite.
10) “moves vertically away”
Paragon’s Proposed Berry’s Proposed Court’s
Disputed Term
Construction Construction Construction
Lacks enablement
Free to move vertically and/or written
“moves away from a film roll as description; Plain and ordinary
vertically away” the film on a roll alternatively: meaning
thickens during winding Moves along a linear
vertical path away
This term is in claim 1 of the ’356 Patent. In support of its proposed construction, Paragon
cites to the following from the specification: “The film 430 may pass over the retractable idler roll
410, which moves away from the film roll 420 at a separation rate as the film roll increases in
size.” (ECF No. 62 at PageID 864.) (citing ’356 Patent, col. 3 ll. 49–51.)
In support of its contention that the term lacks enablement or written description, Berry
states that “[c]laims with substantially similar language were rejected in a related Canadian Patent
Application No. 2,669,502 despite Paragon’s attempt to justify the claim limitations,” and
“Paragon conceded this fact and cancelled the claims containing this language.” (ECF No. 63 at
PageID 1135.) In support of its alternative construction, Berry cites to the prosecution history
where the “vertically” term was added to overcome the prior art. (Id. at PageID 1136.) (citing ECF
No. 63-5 at PageID 1341–48.) Berry takes issue with Paragon’s proposed construction because it
“simply adds surplus language around the term being construed, all of which is inconsistent with
the specification and injects further ambiguity into the claim.” (Id.)
In its Response Brief, Paragon asserts that “[n]otwithstanding the Canadian Intellectual
Property Office’s examination, the United States Patent and Trademark Office allowed claim 1 of
the ’356 Patent and it is presumed to be valid.” (ECF No. 65 at PageID 2921.)
Berry’s proffered evidence that the Canadian Intellectual Property Office rejected an
identical claim is irrelevant to whether the claim is enabled under U.S. patent law. As a result, the
Court does not find this claim invalid for lack of enablement or written description. At the hearing,
Paragon indicated that using “moves” instead of “free to move” would be acceptable, and Berry
largely agreed that the plain and ordinary meaning was within the bounds of its alternative
proposed construction. (Hearing Transcript, ECF No. 69 at PageID 3148.) The Court construes
this term to have its plain and ordinary meaning because the phrase “moves vertically away” is
understandable without further construction, and the prosecution history does not indicate that it
should have any different meaning.
11) “the film is wound onto the film roll horizontally”
Paragon’s Proposed Berry’s Proposed Court’s
Disputed Term
Construction Construction Construction
Lacks enablement
and/or written
description;
“the film is
No construction needed alternatively:
wound onto the Plain and ordinary
/ plain and ordinary The film approaches
film roll meaning
meaning the film roll along a
horizontally”
horizontal plane as it
is wound onto the film
roll
This term is in claim 1 of the ’356 Patent. Paragon contends that “[b]ecause the term ‘the
film is wound onto the film roll horizontally’ is not a term of art and is used in its ordinary manner
in claim 1 and the specification of the ‘356 Patent, it does not require construction.” (ECF No. 62
at PageID 864–65.)
Berry asserts that the term lacks enablement or written description because “claims with
substantially similar language were rejected in the related Canadian application, and Paragon could
not overcome the rejection and cancelled the claims there.” (ECF No. 63 at PageID 1139.) Berry
contends that this assertion is further supported by the fact that “the terms ‘horizontal’ and
‘horizontally’ do not appear in the ’356 patent specification,” and that “Fig. 4 fails to provide clear
orientation of the components relative to any direction.” (Id.)
As discussed above, whether or not a claim was allowed in the Canadian application is
irrelevant to the inquiry of patentability under U.S. laws. Further, the claim is self-explanatory
and not a term of art, so plain and ordinary meaning will be used.
12) “wherein each folding guide separates adjacent sections of film . . .”
Paragon’s Proposed Berry’s Proposed Court’s
Disputed Term
Construction Construction Construction
Indefinite;
alternatively:
Wherein each rod is
inserted into a separate
longitudinal slit that
creates two adjacent
“wherein each
edges of two adjacent
folding guide
sections of film and
separates No construction needed
individually contacts
adjacent sections for entire phrase;
the two adjacent edges
of film and alternatively:
of the two adjacent
induces two The folding guides each
sections of film
folds by causing induce two horizontal
thereby introducing
an edge of each folds on nearby film
two folds (one in each
section of film to edges, and after a
of the two adjacent Plain and ordinary
turn under 180° horizontal fold has been
sections of film) by meaning
and induced, the film then
forcing the two
spontaneously completes the folding
adjacent edges to turn
cling to a bottom action and clings to a
under 180° from their
surface of the surface of the film as the
orientation at the first
film as the film film travels from the
idler roll and cling to a
travels from the folding guides to the
bottom surface of the
folding guides to second idler roll
film, without further
the second idler
contact or assistance,
roll”
as the film travels
from the rods to the
second idler roll
thereby separating the
two adjacent sections
of film
This term is in claim 1 of the ’298 Patent. Paragon contends that no construction is needed
and does not offer further analysis in support. (See ECF No. 62 at PageID 867; ECF No. 65 at
PageID 2929.) Berry argues that its proposed construction is consistent with the prosecution
history, which distinguished the patent from prior art because the folding guides induce the edges
to form, and the “edge folds form and set spontaneously.” (ECF No. 63 at PageID 1148.) (citing
ECF No. 63-6 at PageID 1482–83, 1505–06, 1540–42.) Berry argues that Paragon’s alternative
construction is invalid for lack of enablement because “the ‘nearby’ edges being folded by one of
the ‘folding guides’ would not be required to share a common longitudinal slit or be touched by
the same folding rod. No such arrangement is disclosed or enabled by the Asserted Patents.” (Id.)
The Court finds that the plain and ordinary meaning of the phrase properly includes the
limitation that the edge folds form spontaneously. Comparatively, Paragon’s alternative proposed
construction broadens the claims beyond the actual claim language, and Berry’s proposed
construction adds unnecessary complications. Thus, the plain and ordinary meaning of the term
will be adopted.
IV. Summary of Construction
Paragon’s Proposed Berry’s Proposed Court’s
Disputed Term
Construction Construction Construction
A freely rotating
An approximately A freely rotating
cylinder that is
cylindrically shaped cylinder that is rotated
rotated solely by the
material handling solely by the film via
film via film-to-roller
“idler roll” component that film-to-roller traction
traction rather than
conveys stretch film rather than by a motor,
by a motor, belt or
through a machine belt or other external
other external power
process power source
source
An approximately A freely rotating A freely rotating
“retractable idler
cylindrically shaped cylinder that is rotated cylinder that is
roll”
material handling solely by the film via rotated solely by the
component that film-to-roller traction film via film-to-roller
conveys stretch film rather than by a motor, traction rather than
through a machine belt or other external by a motor, belt or
process that backs power source and other external power
away from a film roll which is movable source that backs
as the film on a roll away from a film roll
thickens during as the film on the roll
winding thickens during
winding
Subject to 35 U.S.C. §
112, ¶ 6
Structure: Straight Structure: A rod
cylindrical rod having
a uniform diameter of Function: Defined by
A device or assembly approximately 11/16 the clauses of the
“folding guide” that initiates the inch along its length respective
folding of a film edge independent claim in
Function: Defined by which the term
the clauses of the appears as construed
respective independent in this Order
claim in which the
term appears as
construed herein
Straight cylindrical
A rod that guides rod having a uniform
“folding rod” stretch film during the diameter of A rod
folding process approximately 11/16
inch along its length
A space or separation
Indefinite; A constant non-zero
between the
alternatively: distance between the
“air gap” retractable idler roll
Constant non-zero retractable idler roll
and a wound roll of
distance and the film roll
stretch film
No construction Indefinite;
Does not contact the
needed for entire alternatively:
film roll and keeps a
“maintains an air phrase / plain and Does not contact the
constant non-zero
gap” ordinary meaning for film roll and keeps a
distance
“maintains” constant non-zero
distance
Indefinite, subject to
35 U.S.C. § 112, ¶ 6;
alternatively:
Two or more devices
or assemblies that Structure: Plurality of
initiate the folding of a straight cylindrical
film edge and are rods having a uniform
arranged between a diameter of
first approximately approximately 11/16
cylindrically shaped inch along their
material handling lengths that are
component that positioned between
conveys stretch film and in the same plane
through a machine as the first idler roll
process and a second and the second idler
approximately roll at a guide distance
cylindrically shaped approximately 2/3 of
material handling the first distance from Plurality of rods that
“plurality of component that the first idler roll and are positioned
folding guides conveys stretch film at a guide angle between the first idler
that are through a machine approximately 45° roll and the second
positioned” / process / Arranging toward the first idler idler roll /
“positioning a two or more devices or roll / Positioning a positioning a plurality
plurality of assemblies that initiate plurality of straight of rods between the
folding guides” the folding of a film cylindrical rods having first idler roll and the
edge between a first a uniform diameter of second idler roll
approximately approximately 11/16
cylindrically shaped inch along their
material handling lengths between and in
component that the same plane as the
conveys stretch film first idler roll and the
through a machine second idler roll at a
process and a second guide distance
approximately approximately 2/3 of
cylindrically shaped the first distance from
material handling the first idler roll and
component that at a guide angle of
conveys stretch film approximately 45°
through a machine toward the first idler
process roll
Function: Defined by
the wherein clause of
the respective
independent claim as
construed herein
Arranging two or
Positioning a plurality
more rods that guide
of straight cylindrical
stretch film during the
“positioning a rods having a uniform
folding process with Positioning a
plurality of diameter of
respect to two or more plurality of rods
folding rods” approximately 11/16
devices or assemblies
inch along their
that initiate the folding
lengths
of a film edge
Indefinite, subject to
35 U.S.C. § 112 ¶ 6;
alternatively:
Each rod is inserted
into a separate
longitudinal slit that
creates two adjacent
edges of two adjacent
sections of film and
Each device or individually contacts
Each rod that initiates
assembly that initiates the two adjacent edges
the folding of a film
the folding of a film of the two adjacent
“each folding edge . . . initiates
edge . . . initiates sections of film
guide . . . induces formation of two
formation of thereby introducing
two folds” / horizontal folds”/
horizontal folds / two folds (one in each
“inducing two Causing the
Causing the formation of the two adjacent
folds with each formation of two
of two folds with each sections of film) /
folding guide” folds with each rod
device or assembly Each rod is inserted
that initiates the
that initiates the into a separate
folding of a film edge
folding of a film edge longitudinal slit that
creates two adjacent
edges of two adjacent
sections of film and
individually contacts
the two adjacent edges
of the two adjacent
sections of film
thereby introducing
two folds (one in each
of the two adjacent
sections of film)
No construction
needed; alternatively:
“adjacent” Not distant; nearby Next to
Adjoining, abutting, or
bordering
No construction
needed; alternatively:
Sections of film
“adjacent sections Not distant or nearby sharing a common Sections of film next
of film” sections of film longitudinal slit to each other
creating adjacent
edges of the sections
of film
The preamble is non-
In-line, or in a single limiting; alternatively: The preamble is non-
“in-process”
continuous process In a film processing limiting
operation
Subject to 35 U.S.C. §
112, ¶ 6
This limitation renders Structure: A frame
A mechanism that
claim 1 indefinite as
“oscillating oscillates stretch film
no corresponding Function: Moves
mechanism” after folded edges
structure is disclosed back and forth
have been induced
in the description of between two points
the alleged invention
in the ’356 Patent
Lacks enablement
Free to move
and/or written
vertically away from a
“moves vertically description support; Plain and ordinary
film roll as the film on
away” alternatively: meaning
a roll thickens during
Moves along a linear
winding
vertical path away
Lacks enablement
and/or written
description support;
“the film is No construction alternatively:
Plain and ordinary
wound onto the needed / plain and The film approaches
meaning
roll horizontally” ordinary meaning the film roll along a
horizontal plane as it
is wound onto the film
roll
Indefinite;
alternatively:
Wherein each rod is
inserted into a separate
longitudinal slit that
creates two adjacent
edges of two adjacent
No construction sections of film and
needed for entire individually contacts
phrase; alternatively: the two adjacent edges
The folding guides of the two adjacent
each induce two sections of film
horizontal folds on thereby introducing
“wherein each
nearby film edges, and two folds (one in each
folding guide
after a horizontal fold of the two adjacent Plain and ordinary
separates
has been induced, the sections of film) by meaning
adjacent sections
film then completes forcing the two
of film . . .”
the folding action and adjacent edges to turn
clings to a surface of under 180° from their
the film as the film orientation at the first
travels from the idler roll and cling to a
folding guides to the bottom surface of the
second idler roll film, without further
contact or assistance,
as the film travels
from the rods to the
second idler roll
thereby separating the
two adjacent sections
of film
No construction Wherein each rod is
needed for entire inserted into a separate
phrase; alternatively: longitudinal slit that
The folding rods creates two adjacent
“separating separate adjacent edges of two adjacent
adjacent sections sections of film and sections of film and
Plain and ordinary
of film and induce a horizontal individually contacts
meaning
inducing two fold on the edges of the two adjacent edges
folds . . .” each of adjacent of the two adjacent
sections, and after a sections of film
fold has been induced, thereby introducing
the film then two folds (one in each
completes the folding of the two adjacent
action and clings to a sections of film) by
surface of the film forcing the two
adjacent edges to turn
under 180° from their
orientation at the first
idler roll and cling to a
bottom surface of the
respective section of
film, without further
contact or assistance,
as the sections of film
move past the rods
thereby separating the
two adjacent sections
of film
IT IS SO ORDERED, this 19th day of April, 2022.
/s/ Jon P. McCalla
JON P. McCALLA
UNITED STATES DISTRICT JUDGE