Petition for Writ of Certiorari — Manchak v. Sevenson Environmental Services, Inc.

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991%« S4 MAY 8B 200

No. 99-

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IN THE

Supreme Court of the United States

FRANK MANCHAK, JR.,

Petitioner,

SEVENSON ENVIRONMENTAL SERVICES, INC.,

Respondent.

On PETITION FOR A WRIT OF CERTIORARI

TO THE UNITED STATES FEDERAL CIRCUIT COURT OF APPEALS

PETITION FOR A WRIT OF CERTIORARI

ALAN L. BriGGs

Counsel of Record

ANDREW W. COHEN

DonnlE L. Kipp, JR.

SQUIRE, SANDERS & Dempsey L.L.P.

Attorneys for Petitioner

1201 Pennsylvania Avenue, N.W.

Washington, D.C. 20004

(202) 626-6600

——

159341 @ Counsel Press LLC

(800) 274-3321 + (800) 359-6859

Ce Te ee ey Ee a — — a

QUESTION PRESENTED FOR REVIEW

What is the appropriate scope of review when the United

States Court of Appeals for the Federal Circuit reviews patent

claim construction decisions made by a United States District

Court Judge?

PARTIES TO THE PROCEEDING

The petitioner is Frank Manchak, Jr.

The respondent is Sevenson Environmental Services, Inc.

Defendants in the underlying lawsuit in the United States

District Court for the District of Delaware are Chemical

Waste Management, Inc.; Rust Remedial Services, Inc.;

Wheelabrator Environmental Services Inc.; and Laidlaw

Environmental Services, Inc. Judge Roderick R. McKelvie

of the District of Delaware stayed further action against these

Defendants and allowed Petitioner to proceed only against

Respondent. Defendants were not parties to the judgment

and orders of the United States Court of Appeals for the

Federal Circuit which form the basis of this petition.

Petitioner will serve copies of the petition upon these

Defendants.

—=a.

TABLE OF CONTENTS

Page

Question Presented for Review ................ i

Parties to the Proceeding ..................... il

Table of Contents ..............-ececeseeeees ii

Table of Cited Authorities ............ 0.00006. v

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I issn gods an wag duel dc ono 1

Statement of Jurisdiction ..................... 1

Constitutional and Statutory Provisions Involved . |

Statement of the Cane. SPOT ee ee ee eee Pee l

Reasons for Granting the Writ ................. 6

I. The Historical Uncertainty and Need for

Resolution. ...... Saeed ance @ ue edhe ks 7

I]. The Federal-Circuit’s De Novo Review of the

Trial Court’s Factual Decisions is Contrary

to Supreme Court Precedent, the Federal

Rules of Civil Procedure, Proper Concepts

of Judicial Allocation, and Fundamental

ed ak va seen ek ax da eee D 11

Contents

The Supreme Court Rule for Appellate

Review of Factual Decisions of a Trial

Court Requires Application of a “Clearly

Erroneous” Standard. ..............

The Federal Rules of Civil Procedure

Require Application of a “Clearly

Erroneous” Standard to a Judge’s

pe ee, pe

Patent Claim Construction is a Mixed

Question of Fact and Law for Which the

Trial Judge is the Proper Judicial Actor

to Decide the Isgee. ................

Fundamental Fairness Dictates that De

Novo Review by the Federal Circuit of

the Trial Court’s Markman Decision is

WES ¥cedinduvs ine eee eee

III. The Questions Presented Are Important. .. .

Conclusion

eo! 6 Oe SE CR OS 6 OE O'S CE PAD OSD C6 OC Oe OD BD SE SO CS

Page

PF Te ee ee ee ee Eee Pe Pee ee

TABLE OF CITED AUTHORITIES

Page

Cases:

Anderson v. Bessemer City, 470 U.S. 564 (1984)

Se ree ee en a 9 12, 13, 14, 15, 18, 19

Cybor Corp. v. FAS Technologies., Inc., 138 F.3d

ie ti | eee eee re eo 6, 8, 9, 17, 19, 20, 21, 23

Dennison Mfg. Co. v. Panduit Corp., 475 U.S. 809

CRD ik ckn cd Vaceva noes eens eae eee 15, 19

Graver Tank & Mfg. Co. v. Linde Air Products Co.,

356 UB: 27 CI in ea ssa 6 ee As 15

In re Zurko, 111 F.3d 887 (Fed. Cir. 1997), rev'd,

SIT UE. TORTI Ie ik ka cae ccwanvawarnoaans 19, 20

Lucas Aerospace v. Unison, 890 F. Supp. 329

.) i eerreweerea rrr ye rere: 3 oe

Markman v. Westview Instruments, 52 F.3d 967 (Fed.

Ce. SH i Sa i a eee 8, 19

Markman v. Westview Instruments, 517 U.S. 370

Ci) EPPS eE eee Cee ere ee 8, 16, 20

Miller v. Fenton, 474 U.S. 104 (1985) .......... 16

Wainwright v. Sykes, 433 U.S. 72 (1977) ........ 19

Cited Authorities

Page

Statute:

oe UA. S URGED a sk avxck ocue eee l

United States Constitution:

US. Comm: OE OS, 06S |..ss cca bevncisas tase, 23

Rules:

POm. Bi. CWP. BS vicisccektcsscdeoweeen 14, 15, 18

Pod. Ri. Cw: PSM oo css5 eae ee 15

N. Dist. Cal. Loc. R. 16-10 to 11... nec ccc cee 9

Other Authority:

Luke L. Dauchot, “The Federal Circuit’s De Novo

Review of Patent Claim Construction: |

A Need for a More Balanced Approach,” JPL

Newsletter (Amer. Bar Ass’n), Fall 1999 ...... 9

vil

TABLE OF APPENDICES

Appendix A — Opinion Of The United States Court

Of Appeals For The Federal Circuit Dated And

Decided December 6, 1999 .................

Appendix B — Memorandum Opinion Of The

United States District Court For The District Of

Delaware Dated May 1, 1997 ................

Appendix C — Order Of The United States Court

Of Appeals For The Federal Circuit Denying

Petition For Rehearing Dated And Filed February

A ar is ren ee pee ie Prat Pye

Appendix D — Constitutional Provision And Rule

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WE 2 2.4n coder ash ann d ced eed ke ecanseewas

Appendix F — U.S. Patent No. 4,079,003 Dated

gS ry Pr mrer errr

Appendix G — Article From American Bar

Association, The Federal Circuit’s De Novo

Review Of Patent Claim Construction: A Need

For A More Balanced Approach, Fall 1999 ....

Page

15a

52a

54a

55a

56a

57a

Frank Manchak, Jr. (“Manchak”) petitions for a writ of

certiorari to review the judgment of the United States Court

of Appeals for the Federal Circuit in this matter.

OPINIONS BELOW

The Federal Circuit’s order reversing the United States

District Court for the District of Delaware, for which review

is sought, is reproduced in Appendix A. The judgment of

the District of Delaware, which the Federal Circuit reversed,

is reproduced in Appendix B. The Federal Circuit’s order

denying a rehearing is reproduced in Appendix C.

The judgment and orders are not reported.

STATEMENT OF JURISDICTION

On December 6, 1999, the Federal Circuit entered its

order reversing the District Court’s judgment. App. A. By

order entered February 8, 2000, the Federal Circuit denied

Manchak’s Petition for Rehearing and Petition for Rehearing

En Banc. App. C. This petition is filed within ninety days of

entry of the February 8, 2000 order. This Court has

jurisdiction under 28 U.S.C. § 1254(1).

CONSTITUTIONAL AND STATUTORY

PROVISIONS INVOLVED

The relevant provisions are reproduced in the appendix

to this petition. App. D.

STATEMENT OF THE CASE

Petitioner Manchak, a resident of Santa Barbara,

California, is the inventor and owner of U.S. Patent No.

4,079,003 (“the ‘003 patent”), entitled “Method of

Transforming Sludge into Ecologically Acceptable Solid

Material,” which issued on March 14, 1978. The preamble

in claim 1 of the ‘003 patent states that its basic purpose

concerns:

[a] method of transforming aqueous organic

material containing sludge that may include virus

and odor forming bacteria and toxic soluble

compounds that are converted to substantially

insoluble compounds in an alkaline environment

into a solid, friable, and substantially odor free

reaction product. ...

App. E.

At trial, Manchak testified about what his patent

accomplished:

[T]his patent basically . . . opened up a totally new

industry. . . . [I]t was — able to, in a very basic

form, . . . to deal with bacteria, deal with metals,

deal with reduction. ... These are all the things

that people were interested in and it was of real

importance. The most important thing that I had

seen [was] that. . . the alternative costs were one

of putting it into incinerators and burning the

material or dumping it into the oceans or

whatever, that this, in fact, provided a cost-

effective way and a cheap way of dealing with

some very, very serious problems.

Testimony of Frank Manchak, Jr., Tr. of Trial Proceedings

pp. 152-53 (June 9, 1997).

On November 16, 1995, Manchak filed suit in federal

court in Wilmington, Delaware against Sevenson

Environmental Services, Inc. (“Respondent”) and several

others alleging infringement of the ‘003 patent. Manchak

alleged that Respondent infringed the ‘003 patent during its

clean-up of the Marathon Battery site, a Superfund site

located in Cold Spring, New York. The trial court permitted

the case against Respondent to go forward and stayed

discovery and trial against all other defendants.

Respondent disputed the meaning of twenty-five words

and phrases in claims | and 13 of the ‘003 patent. From

January 14-16, 1997, United States District Judge Roderick

R. McKeivie held a Markman trial to resolve those claim

construction disputes. At the Markman trial, Judge McKelvie

received the intrinsic evidence (the patent and the prosecution

history) generally without objection. The three-day Markman

trial then focused primarily on presentation of extrinsic

evidence. Judge McKelvie received extensive testimony from

Respondent’s technical expert, Dr. G. Lee Christensen

(Professor of Environmental Engineering, Villanova

University), and Manchak’s technical expert, Dr. Ronald D.

Neufeld (Professor of Civil Engineering, University of

Pittsburgh).

During the Markman trial, the crucial and contested

question concerned the meaning of the disputed terms in

claims 1 and 13 of the ‘003 patent as construed by a “person

of ordinary skill in the art” at the time of the invention in

1976. Accordingly, Judge McKelvie heard expert testimony

regarding the appropriate education and experience of a

“person of ordinary skill in the art” in 1976. The experts

hotly contested those qualifications. Dr. Christensen testified

that a person of ordinary skill in the art would have had a

master’s degree in environmental engineering and five years

of experience in sludge treatment. Dr. Neufeld disagreed and

testified that such a person would have been a project

manager in environmental remediation without any formal

education beyond high school. Dr. Neufeld based those

qualifications on the low education level among workers in

the environmental remediation industry in 1976 and slow

technological advances in the field at that time.

Judge McKelvie received the testimony and resolved the

issues as any trial court does — by evaluating the evidence

and its credibility. The court explained:

After evaluating the testimonies of Drs.

Christensen and Neufeld, the court finds that Dr.

Neufeld’s definition of one with ordinary skill in

the art of sludge treatment in 1976 is more

appropriate. ...

Accordingly, the court will adopt the following

definition of one with ordinary skill in the art of

sludge treatment in 1976:

A sludge removal project supervisor,

who has worked at least two years in

the industry and remains continually

abreast of practical innovations and

technological developments in the art of

sludge treatment.

Having set out the level of ordinary skill in the

art of sludge treatment in 1976, the court will now

endeavor to construe the genuinely disputed terms

of claims 1 and 13 of the ‘003 patent.

App. B at 34a.

Judge McKelvie followed the same approach in

construing each of the twenty-five disputed terms. He

received pre-trial briefs, listened to three days of testimony

from the technical experts and others, received documentary

evidence, and heard oral argument.

On May 1, 1997, Judge McKelvie issued a thirty-four

page opinion resolving the claim construction issues in

advance of trial. From June 9-19, 1997, the case was tried to

a jury. The jury found that Respondent literally infringed

the ‘003 patent and awarded Manchak $975,000 in damages.

Following post-trial motions, Respondent appealed the

judgment to the Federal Circuit. On December 6, 1999, the

Federal Circuit reversed the trial court and entered judgment

for Respondent. The reversal focused entirely on claim

construction. The Federal Circuit applied a de novo standard

of review without any deference to the trial court’s decision.

The Federal Circuit singled out two of the twenty-five words

that the trial court laboriously construed and substituted its

own determination of what it believed those words meant.

The Federal Circuit then held that, under its own construction

of the terms, no infringement occurred. The Federal Circuit

explained its actions by asserting that:

A district court’s construction of disputed claim

terms is a question of law subject to plenary

review on appeal. See Cybor Corp. v. FAS Techs.,

Inc., 138 F.3d 1448, 1456, 46 USPQ2d 1169, 1174

(Fed. Cir. 1998) (en banc). This court owes no

deference to a jury verdict based on an improper

claim construction, especially where the correct

construction of the claims is dispositive on the

issue of infringement.

App. A at 6a-7a.

In its written opinion, the Federal Circuit neither

reviewed the testimony from the three-day Markman trial

nor discussed the education and/or experience level of a

“person of ordinary skill in the art.” Rather, the Federal

Circuit appears to construe the claim terms based on the skill

and experience of the members of that court, and not based

on the understanding of a person of ordinary skill in the art

in 1976.

_ REASONS FOR GRANTING THE WRIT

The Federal Circuit’s de novo review of patent claim

construction decisions made by federal district court judges

in Markman hearings is inconsistent with Supreme Court

precedent, the Federal Rules of Civil Procedure, the

appropriate allocation of judicial resources, and fundamental

fairness.

In an en banc decision in Cybor Corp. v. FAS

Technologies., Inc., 138 F.3d 1448 (1998), which yielded

six separate opinions, the Federal Circuit held that it would

apply a de novo standard of review to Markman hearings

and claim construction. See id. at 1456. Applying that

standard in this case, the Federal Circuit gave no deference

whatsoever to the decision of the trial judge. That was the

trial judge who held three days of hearings, listened to the

witnesses, reviewed the documents, asked questions of the

witnesses and the lawyers, and read the briefs. It was the

same trial judge who then wrote a thirty-four page decision

that first determined the education and experience of a person

of ordinary skill in the art before deciding how that person

would interpret the twenty-five disputed words and phrases

in the patent. The Federal Circuit, under its de novo standard,

instead ignored the trial court’s decision, and substituted its

own construction for that of a person of ordinary skill in the

art of sludge removal in 1976.

The question before this Court is simple: When the

Federal Circuit reviews claim construction decisions made

by a federal district court judge, is the scope of review de

novo or does the Federal Circuit owe some level of deference

to the action of the trial judge? The Federal Circuit says it

owes no deference. This Court has never decided the issue.

I. The Historical Uncertainty and Need for Resolution.

Determination of the proper scope of review by an

appellate court of trial court orders depends upon whether

the underlying issue is (1) a question of law (de novo review),

(2) a question of fact (deferential review, usually “clearly

erroneous”), or (3) a mixed question of law and fact.

Considerable doubt, however, has existed for years regarding

the Federal Circuit’s scope of review for claim construction

decisions in patent cases because this Court has never

addressed the question. *

The intellectual property world has questioned for some

time whether patent claim construction is a question of law

exclusively for the court, a question of fact for the trier of

fact (judge or jury), or a mixed question of fact and law. In

Markman vy. Westview Instruments, 52 F.3d 967 (Fed. Cir.

1995) (en banc) (“Markman I’), the Federal Circuit held that

claim construction is a question of law exclusively for the

court. This Court affirmed in Markman v. Westview

Instruments, 517 U.S. 370 (1996) (“Markman IT’), finding

no historical right to a jury trial for claim construction.

See id. at 372 (“We hold that the construction of a patent,

including terms of art within its claim, is exclusively within

the province of the court.”).

This Court’s decision that claim construction is

“exclusively within the province of the court,” however, does

not determine whether claim construction is a legal question

or a factual question. That issue simply was not before the

Markman I] Court, which held only that there is no right to a

jury trial for claim construction.

The Markman I] Court, however, gave some guidance

on the issue. It stated that “construing a term of art following

receipt of evidence” is a “mongrel practice” and that the issue

may “fall[ ] somewhere between a pristine legal statement

and a simple historical fact.” 517 U.S. at 378, 388.

Nevertheless, a majority of the Federal Circuit in Cybor held

that claim construction is a legal issue that requires de novo

review without deference to the trial court. The Cybor

decision, however, severely divided the Federal Circuit,

yielding six separate opinions, including two separate

dissenting opinions specifically addressing the scope of

review issue.

Since Markman IJ and I] (and Cybor), trial court claim

construction has followed a consistent pattern. If genuinely

disputed patent terms arise, the trial court holds a Markman

hearing. Hearings may last a few hours or several days.

> nat

Several courts have specific written rules governing claim

construction trials. See, e.g., N. Dist. Cal. Loc. R. 16-10

to 11 (addressing procedures for claim construction

proceedings and hearing). Pretrial briefs generally precede

the hearings, followed by opening statements, witnesses,

offers of evidence, arguments, objections and the full panoply

of trial procedures. Thereafter, the trial judge renders a

decision. Clearly, the Markman trial mirrors a bench trial in

form and substance.

This case provides no exception. The procedures here

required pretrial briefs, opening statements, and three days

of trial testimony. The hearings focused primarily on

opposing technical experts explaining the characteristics they

believed a person of ordinary skill in the appropriate art

would have had at the relevant time and how that person

would interpret the disputed terms. Thereafter, Judge

McKelvie construed the claims and issued a thirty-four page

opinion.

As with prior patent cases, the Federal Circuit relied on

the majority decision in Cybor to engage in a de novo review

of the trial court’s claim construction process. Here, the

Federal Circuit accordingly determined that it could ignore

the trial testimony and lower court’s decisions. That

approach, however, neither gained the approval of the

dissenting judges in Cybor who opposed this unilateral

assumption of power, nor has it settled well with the

intellectual property bar. See Luke L. Dauchot, “The Federal

Circuit’s De Novo Review of Patent Claim Construction:

A Need for a More Balanced Approach,” JPL Newsletter

(Amer. Bar Ass’n), Fall 1999, at 1, reprinted in App. L.

Further, federal district court judges are equally

mystified by the Federal Circuit’s de novo approach, which

ignores and effectively nullifies the Markman trials they

hold:

This somewhat startling conclusion that the trial

judge “does not make credibility assessments”

apparently derives from the en banc court’s more

general holding that no issue of claim construction

presents a question of fact for the jury. As |

understand Markman, because claim construction

presents a purely legal question, trial judges must

ignore all non-transcribible [sic] courtroom

occurrences such as a witness’ body language,

inability to maintain eye contact when confronted

with a telling question, hesitance or delay in

giving an answer, an affirmative answer in a voice

revealing the truthful answer is “no,” or the

changing demeanor of a witness when shifting

from sure to treacherous footing. All of the

preceding occurred in this trial. When two experts

testify differently as to the meaning of a technical

term, and the court embraces the view of one, the

other, or neither while construing a patent claim

as a matter of law, the court has engaged in

weighing evidence and making credibility

determinations. If those possessed of a higher

commission wish to rely on a cold written record

and engage in de novo review of all claim

constructions, that is their privilege. But when the

Federal Court of Appeals states that the trial court

does not do something that the trial court does

and must do to perform the judicial function, the

court knowingly enters a land of sophistry and

fiction.

Lucas Aerospace v. Unison, 890 F. Supp. 329, 333 n.7

(D. Del. 1995). ;

In light of this situation, now is the proper time for the

Supreme Court to answer the important question: What is

the appropriate scope of review for patent claim construction?

II. The Federal Circuit’s De Novo Review of the Trial

Court’s Factual Decisions is Contrary to Supreme

Court Precedent, the Federal Rules of Civil

Procedure, Proper Concepts of Judicial Allocation,

and Fundamental Fairness.

A. The Supreme Court Rule for Appellate Review

of Factual Decisions of a Trial Court Requires

Application of a “Clearly Erroneous” Standard.

Supreme Court precedent makes it clear that the standard

of review for factual decisions made by the trial judge is a

“clearly erroneous” standard. The Court has stated that:

Although the meaning of the phrase “clearly

erroneous” is not immediately apparent, certain

general principles governing the exercise of the

appellate court’s power to overturn findings of a

district court may be derived from our cases. The

foremost of these principles, as the Fourth Circuit

itself recognized, is that “[a] finding is ‘clearly

erroneous’ when although there is evidence to

Support it, the reviewing court on the entire

evidence is left with the definite and firm

conviction that a mistake has been committed.”

United States v. United States Gypsum Co., 333

U.S. 364, 395 (1948). This standard plainly does

not entitle a reviewing court to reverse the finding

of the trier of fact simply because it is convinced

that it would have decided the case differently.

The reviewing court oversteps the bounds of its

duty under Rule 52(a) if it undertakes to duplicate

the role of the lower court. “In applying the clearly

erroneous standard to the findings of a district

court sitting without a jury, appellate courts must

constantly have in mind that their function is not

to decide factual issues de novo.” Zenith Radio

Corp. v. Hazeltine Research, Inc., 395 U.S. 100,

123 (1969). If the district court’s account of the

evidence is plausible in light of the record viewed

in its entirety, the court of appeals may not reverse

it even though convinced that had it been sitting

as the trier of fact, it would have weighed the

evidence differently. Where there are two

permissible views of the evidence, the factfinder’s

choice between them cannot be clearly erroneous.

United States v. Yellow Cab Co., 338 U.S. 338,

342 (1949); see also Inwood Laboratories, Inc.

v. Ives Laboratories, Inc., 456 U.S. 844 (1982).

Anderson v. Bessemer City, 470 U.S. 564, 573-74 (1984).

Justice White spoke for the Anderson Court when he

stated that not only does the “clearly erroneous” standard

apply when the decisions of the trial court are based on

witness credibility judgments, but it also applies with equal

force to decisions based on documentary and other types of

evidence. See id. at 573-74. Justice White explained that:

The rationale for deference to the original finder

of fact is not limited to the superiority of the trial

judge’s position to make determinations of

credibility. The trial judge’s major role is the

determination of fact, and with experience in

fulfilling that role comes expertise. Duplication

of the trial judge’s efforts in the court of appeals

would very likely contribute only negligibly to

the accuracy of fact determination at a huge cost

in diversion of judicial resources. In addition, the

parties to a case on appeal have already been

forced to concentrate their energies and resources

on persuading the trial judge that their account of

the facts is the correct one; requiring them to

persuade three more judges at the appellate level

is requiring too much. As the Court has stated in

a different context, the trial on the merits should

be “the ‘main event’... rather than a ‘tryout on

the road.’ ” Wainwright v. Sykes, 433 U.S. 72, 90

(1977). For these reasons, review of factual

findings under the clearly-erroneous standard —

with its deference to the trier of fact — is the rule,

not the exception.

_Id. at 574-75. This same rationale should apply to the

decisions of federal district court judges made after they hold

Markman hearings, observe witnesses, and review documents

and other evidence.

B. The Federal Rules of Civil Procedure Require

Application of a “Clearly Erroneous” Standard

to a Judge’s Factual Decisions.

In 1984, when this Court decided Anderson, Federal Rule

of Civil Procedure 52 stated that “[f]indings of fact shall not

be set aside unless clearly erroneous, and due regard shall

be given to the opportunity for the trial court to judge of

[sic] the credibility of the witness.” In 1985, Rule 52 was

amended to add language clarifying that it applies to judicial

decisions based on documents as well as witness testimony.

The Advisory Committee explained the reason for the

change, stating:

The principal argument advanced in favor of a

more searching appellate review of findings by

the district court based solely on documentary

evidence is that the rationale of Rule 52(a) does

not apply when the findings do not rest on the

trial court’s assessment of credibility of the

witnesses but on an evaluation of documentary

proof and the drawing of inferences from it, thus

eliminating the need for any special deference to

the trial court’s findings. These considerations are

outweighed by the public interest in the stability

and judicial economy that would be promoted by

recognizing that the trial court, not the appellate

tribunal, should be the finder of the facts. To

permit courts of appeals to share more actively

in the fact-finding function would tend to

undermine the legitimacy of the district courts in

the eyes of litigants, multiply appeals by

encouraging appellate retrial of some factual

issues, and needlessly reallocate judicial

authority.

Fed. R. Civ. P. 52 advisory committee’s note (emphasis

added). The same public interest in the stability of and

confidence in the judicial system strongly militates in favor

of deference to trial court decisions.

Further, application of Rule 52 is imperative in patent

cases in which the trial judge must review technical evidence

and expert testimony to reach a decision. In Graver Tank &

Mfg. Co. v. Linde Air Products Co., 336 U.S. 271 (1949),

this Court applied Rule 52 in a patent infringement case and

required the appellate court to defer to the “advantages

possessed by the trial court in appraising the significance of

conflicting testimony and reverse only ‘clearly erroneous’

findings.” /d. at 275. Noting that the trial judge had reviewed

the evidence and expert testimony at length, the Court clearly

stated that “to no type of case is this last clause [of Rule

52(a)] more appropriately applicable than to the one before

us, where the evidence is largely the testimony of experts as

to which a trial court may be enlightened by scientific

demonstrations.” /d.; see also Dennison Mfg. Co. v. Panduit

Corp., 475 U.S. 809 (1986) (per curiam) (holding that

regardless of whether “obviousness” is an issue of fact

subject to Rule 52, the “subsidiary determinations of the

District Court, at least, ought to be subject to the Rule.”).

C. Patent Claim Construction is a Mixed Question

of Fact and Law for Which the Trial Judge is the

Proper Judicial Actor to Decide the Issue.

Both Anderson and Rule 52 address the scope of review

for “fact” issues. Once a court characterizes an issue as a

“fact” question or a “legal” question, the rules for the scope

of appellate review become clear. The difficult question,

however, is properly characterizing an issue as one of fact,

one of law, or a mixed question of fact and law. No fail-safe

litmus test exists to provide an easy answer.

In Miller v. Fenton, 474 U.S. 104 (1985), this Court

reviewed the question of whether the “voluntariness” of a

confession is a question of fact or law. The Court stated that

“the appropriate methodology for distinguishing questions

of fact from questions of law has been, to say the least,

elusive.” Jd. at 113. The Court went on to say:

Perhaps much of the difficulty in this area stems

from the practical truth that the decision to label

an issue a “question of law,” a “question of fact,”

or a “mixed question of law and fact” is sometimes

as much a matter of allocation as it is of analysis.

At least in those instances in which Congress has

not spoken and in which the issue falls somewhere

between a pristine legal standard and a simple

historical fact, the fact/law distinction at times has

turned on a determination that, as a matter of the

sound administration of justice, one judicial actor

is better positioned than another to decide the

issue in question.

Id. at 113-14 (citation omitted).

As this Court suggested in Markman II, the practice of

patent claim construction is a mixed question of fact and

law, such that it is appropriate to analyze who is the better

judicial actor to decide the question. 517 U.S. at 378, 388.

As between a trial judge, who presides over the entire claim

construction process, hears the witnesses’ testimony, and has

intimate involvement with the details, and appellate judges,

who review briefs and hear argument on carefully selected

issues, the choice is clear. Judge Rader expressed this

cogently in his Cybor dissent, stating:

[A] sterile written record can never convey all the

nuances and intangibles of the decisional process.

Indeed a careful consideration of the institutional

advantages of the district.court would counsel

deference. This court’s categorical response that

claim interpretation involves no factual

assessments does not advance a functional

analysis of trial and appellate roles in claim

construction. As a matter of fact (so to speak),

claim construction requires assessment of custom

and usage irrthe relevant art, assessment of events

during prosecution, assessment of the level of

ordinary skill in the art, assessment of the

understanding of skilled artisans at the time of

invention — to name just a few factual

components of the complex process of claim

interpretation. A careful functional analysis

counsels deference for district court claim

interpretations.

Cybor, 138 F.3d at 1478 (Rader, J., dissenting).

The claim construction process requires the judge to

decide what specific words mean to a person of ordinary

skill in the art at the time of invention. Some words may be

extremely technical, while others may be expressed in simple

English but used in combination with other technical words.

The judge may hear witnesses and receive evidence to

“construct” the knowledge and experience that a person of

ordinary skill in the art had at the appropriate time. The trial

judge then must decide what the disputed words would mean

to such a theoretical person. This process frequently requires

hearing technical witnesses in the art and then making

credibility decisions regarding the specific positions. The

judge finally must make a decision regarding interpretation

of the patent. These functions are traditional duties within

the fundamental province of a trial judge — to receive pre-

and/or post-Markman trial briefs; view, hear and evaluate

witnesses; receive documentary evidence; listen to oral

argument; and evaluate all of this to reach a decision. This

process is precisely what trial judges are trained — and best

suited —to do.

D. Fundamental Fairness Dictates that De Novo

Review by the Federal Circuit of the Trial Court’s

Markman Decision is Wrong.

A sense of fairness is imperative to the American judicial

system. A patent litigant loses this sense under the Federal

Circuit’s current de novo standard. In cases such as this one,

a litigant participates in a Markman trial. After this lengthy,

expensive procedure, however, federal appellate judges who

have never seen the witnesses or heard the evidence can

simply ignore and nullify the results without the slightest

deference to the trial court’s decision. The trial court’s

process becomes meaningless and its decisions have no

value despite the trial judge’s proximity to and involvement

with the evidence supporting claim construction. The words

of the Advisory Committee when it amended Rule 52

in 1985 spoke to this issue of fundamental fairness.

See Fed. R. Civ. P. 52 advisory committee’s note.

This Court addressed the same concept of fundamental

fairness in Anderson, when it held that “the trial on the merits

should be ‘the ‘main event’ . . . rather than a ‘tryout on the

road.” ’” 470 U.S. at 575 (citing Wainwright v. Sykes, 433

U.S. 72, 90 (1977)) (noting that, after litigants have expended

energy to persuade a trial judge of their cause, “requiring

them to persuade three more judges at the appellate level is

requiring too much”). The Court therefore endorsed the

“clearly erroneous” standard for review of fact questions.

See id.; see also Dennison Mfg. Co., 475 U.S. at 810 (holding

that clearly erroneous standard should apply to subsidiary

factual issues of ultimate issue).

The specialized appellate judges of the Federal Circuit

unilaterally have usurped the trial court’s role by

implementing a de novo review standard and disregarding

the work of the generalist federal district court: judges. The

words of Judge Mayer in his separate opinion in Markman I

are worthy of consideration: “The quest to free

patent litigation from the ‘unpredictability’ of jury verdicts,

and generalist judges, results from insular dogmatism

inspired by unwarrantable elitism; it is unconstitutional.”

Markman I, 52 F.3d at 989.

Indeed, in this pursuit, the Federal Circuit has been

inconsistent in its determination whether or not review and

analysis of patent terms results in a question of fact or a

question of law. In Cybor, the Federal Circuit concluded that

the district court’s analysis of a patent and determination of

the meaning of disputed claim terms presented a question of

law, and therefore was subject to de novo review. Yet, in

In re Zurko, 111 F.3d 887 (Fed. Cir. 1997), rev'd, 527 U.S.

150 (1999), the Federal Circuit concluded that the same type

of analysis and determination by a patent examiner regarding

an obviousness finding was a question of fact subject to

review under a “clearly erroneous” standard. See id. at 889

(“We review the ultimate determination of obviousness

de novo and the underlying factual determinations for clear

error... . We agree with applicants that the Board’s finding

that the prior art teaches, either explicitly or inherently, the

step of obtaining confirmation over a trusted pathway is

clearly erroneous.”’).

In each instance, the Federal Circuit followed an

approach designed to give it greater review power than that

exercised by the other federal appellate courts. In Zurko,

application of the clearly erroneous standard meant less

deference to the agency decision than federal appellate courts

are required to give under the “arbitrary and capricious

standard” of the Administrative Procedure Act. Likewise,

in Cybor, the Federal Circuit’s conclusion that the district

court’s claim construction was a question of law subject to

de novo review resulted in the Federal Circuit obtaining the

broadest possible scope of review. To reach this result, the

Federal Circuit labels “legal conclusions” in Cybor what it

called “factual conclusions” in Zurko, in order to serve its

own interest in expanding its power. Such inconsistent, self-

enhanced appellate authority is inimical to the fair

administration of justice and should not be countenanced.

This inconsistency further supports the Supreme Court’s

conclusion in Markman II] that claim construction actually

is a mixed question of fact and law. It demonstrates that the

relevant question focuses on which judicial actor is best

positioned to resolve the issue.

Other federal appellate judges of the various circuits

exercise restraint because other federal circuits may review

similar issues. For example, the Sixth Circuit understands

that each and every other federal circuit likely may decide

substantially similar issues as the Sixth Circuit. This

understanding serves to check and balance any single federal

Ce ee a re

appellate court from overreaching its authority. No similar

restraint exists for the Federal Circuit in patent cases. Once

the Federal Circuit usurps traditional trial judge duties for

patent claim construction by labeling them “questions of law”

subject to a de novo review standard, litigants have no where

to turn but the Supreme Court of the United States.

III. The Questions Presented Are Important.

The appropriate standard of review is an important issue

that remains a topic of substantial disagreement to the

intellectual property bench and bar. The Federal Circuit

Judges remain divided, as demonstrated by the six separate

opinions in Cybor. The intensity of the schism is clear from

Judge Rader’s dissenting opinion in Cybor:

As a matter of legal analysis, the en banc court’s

direction to trial judges is equally hard to justify.

The objective of claim interpretation is to discern

the meaning of the claim terms to one of ordinary

skill in the art at the time of invention... . In

effect, the en banc opinion has sub silentio

redefined the claim construction inquiry as “how

a lawyer or judge would interpret the term.”

Cybor, 138 F.2d at 1475 (citation omitted).

In addition to dividing the appellate bench, the de novo

standard has left the intellectual property bar at a loss.

As one commentator states:

The question of appellate deference to the claim

construction process at the trial level long has

been a source of deep division within the Court

of Appeals for the Federal Circuit (CAFC). At

the root of the division lie two competing

interests: consistency and certainty in the

interpretation of patents, on the one hand, and the |

primacy of trial courts in resolving factual

disputes, on the other.

* = *

Stripped of their traditional fact-finding authority,

trial courts now find themselves as appellate court

adjuncts — developing a factual record that the

CAFC often needs but cannot, as a court of

review, create. Moreover, hostage to fact-specific

cases and the fiction that there is no fact-finding

in claim interpretation, the appellate directives on

the permissible use and bounds of extrinsic

evidence rightly can be described as a Tower of :

Babel.

Ce any ee ey eT

Dauchot, App. L at 1, 4. The de novo standard has equally

mystified federal district court judges inasmuch as it ignores ;

and nullifies Markman trials. See supra pp. 10-11 (quoting

Lucas Aerospace, 890 F. Supp at 333 n.7).

Further, the de novo standard that the Federal Circuit

has adopted for itself has resulted in a high reversal rate.

That reversal rate breeds uncertainty and protracted litigation,

which-significantly detract from any sense of fairness in the

judicial process. As Judge Rader has explained:

Several high profile appeals have illustrated the

problem created by the Federal Circuit’s high

reversal rate. In Lubrizol, 64 F.3d 1553, and J.T.

Eaton & Co. v. Atlantic Paste & Glue Co., 106

F.3d 1563, 41 U.S.P.Q.2D (BNA) 1641 (Fed. Cir.

1997), this appellate court rejected not only the

trial judge’s claim reading, but also the readings

advocated by both parties at trial and the readings

advocated by all experts in the trial. In fact, in

Eaton, the Federal Circuit did not base its

interpretation on the specification or the totality

of the prosecution history, but instead found its

meaning in a brief excerpt from the affidavit of a

single expert witness at the end of a lengthy

Prosecution. If the parties might succeed in

convincing the Federal Circuit to reverse an entire

trial result with an argument never presented to

the trial court or with a brief excerpt from

hundreds of pages of prosecution (again not

presented to the trial court), would they be wise

to settie after a trial court’s reading of the claims?

Cybor, 138 F.3d at 1476 (Rader, J., dissenting) (citation

omitted). ;

Finally, in addition to the bench and bar being troubled

by the de novo review standard, the inventors supposedly

protected by the patent laws have been thrown into confusion.

On the one hand, the Constitution promotes invention.

See U.S. Const. art. I, § 8, cl. 8 (“The Congress shall have

Power . . . to promote The Progress of Science and the Useful

Arts, by securing for limited times to Authors and Inventors

the exclusive Rights to Their Respective Writings and

Discoveries. . . .”). On the other hand, patent infringement

plaintiffs must pay a heavy price for such Constitutional -

“protection” by financing multiple trials to secure their

inventions — a Markman trial for claim construction and a

jury trial for infringement. Permitting de novo review of

claim construction simply stifles the inventive process if a

plaintiff finds that, after financing a Markman trial before a

district judge and paying experts to testify, the Federal Circuit

can merely brush aside that court’s work and its deliberative

process.

CONCLUSION

For the reasons stated above, the petition for a writ of

certiorari to the United States Court of Appeals for the

Federal Circuit should be granted. .

Respectfully submitted,

ALAN L. BRIGGS

Counsel of Record

ANDREW W. COHEN

DONNIE L. KIpp, JR.

SQUIRE, SANDERS & Dempsey L.L.P.

Attorneys for Petitioner

1201 Pennsylvania Avenue, N.W.

Washington, D.C. 20004

(202) 626-6600

APPENDIX

APPENDIX A — OPINION OF THE UNITED STATES

COURT OF APPEALS FOR THE FEDERAL CIRCUIT

DATED AND DECIDED DECEMBER 6, 1999

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

98-1530

FRANK MANCHAK, JR.

Plaintiff-Appellze,

CHEMICAL WASTE MANAGEMENT, INC., RUST

REMEDIAL SERVICES, INC., WHEELABRATOR

ENVIRONMENTAL SYSTEMS, INC., AND LAIDLAW

ENVIRONMENTAL SERVICES, INC.,

Defendants,

and

SEVENSON ENVIRONMENTAL SERVICES, INC "

Defendant-Appellant.

Decided: December 6, 1999

Before MAYER, Chief Judge, MICHEL and C LEVENGER,

Circuit Judges.

Appendix A

MICHEL, Circuit Judge.

Sevenson Environmental Services, Inc. (“Sevenson”’)

appeals from the judgment of the United States District Court

for the District of Delaware entering a jury verdict that

Sevenson literally infringed claims 1 and 2 of Frank

Manchak, Jr.’s U.S. Patent No. 4,079,003 (“the ’003 patent’’).

Sevenson also appeals the district court’s alternative

post-trial finding under Rule 49(a) of the Federal Rules of

Civil Procedure that Sevenson infringed claims 1 and 2 under

the doctrine of equivalents and the district court’s award of

damages and attorney fees to Manchak. Because the district

court erred in its claim construction and thereby improperly

found both literal and equivalent infringement, we reverse

the judgment of the district court in all respects.

Manchak is the named inventor and owner of the °003

patent, entitled “Method of Transforming Sludge into

Ecologically Acceptable Solid Material.” Claims 1 and 2

recite a method for treating sludge with calcium oxide

(commonly known as limestone or “quick lime’”’):

1. A method of transforming aqueous organic

material containing sludge that may include

virus and odor forming bacteria and toxic

soluble compounds that are converted to

substantially insoluble compounds in an

alkaline environment into a solid, friable, and

substantially odor free reaction product, said

method comprising the steps of:

Appendix A

a. sequentially moving said sludge from a

source thereof at a first rate;

b. sequentially moving calcium oxide from

a source thereof at a second rate, with said

second rate so related to said first rate that

when sludge and calcium oxide are mixed

an exothermic reaction is initiated in which

said sludge and calcium oxide react with

the evolution of steam to form a solid,

friable, substantially odor free reaction

product that has a pH of at least 12 and in

which bacteria and virus initially present

in said sludge are deactivated by said pH

and the heat of said exothermic reaction,

and said soluble toxic compounds initially

present in said sludge are transformed to

substantially water insoluble compounds

due to the high pH of the mixture of said

Sludge and calcium oxide as they

transform to said reaction product;

c. providing an elongate confined space that

has first and second ends;

d. directing said sludge and calcium oxide at

said first and second rates into said first

end of said confined space;

€. concurrently mixing and moving the

mixture of said sludge and calcium oxide

in said confined space from said first end

Appendix A

towards said second end thereof, with the

_ rate of longitudinal movement of said

mixture in said confined space being such

that said exothermic reaction has

transformed said mixture to said reaction

product by the time said reaction product

has reached said second end;

f. withdrawing said steam from said

confined space, and |

g. sequentially removing said reaction

product from said second end of said

confined space.

2. A method as defined in claim | in which said

mixture is concurrently mixed and moved

longitudinally in said confined space by

rotating a number of longitudinally spaced,

transversely and angularly disposed rigid

surfaces within the confines of said confined

space.

(Emphasis added.)

Briefly summarized, sludge and calcium oxide

simultaneously enter one end of an apparatus through two

different openings and at two different rates. They are then

mixed in the “confined space” of the apparatus to initiate an

exothermic reaction. The reaction product exits the apparatus

through a third opening at the opposite end, and the steam

created by the reaction is withdrawn from the apparatus.

Appendix A

Sevenson, an environmental remediation firm, used the

“Maectite process” in cleaning up the Marathon Battery Site

in upstate New York. In the Maectite process, sludge is

poured into a hopper covered by a screen to keep out branches

and rocks. The hopper funnels the sludge onto a conveyor

belt that in turn leads to a weigh belt. The weigh belt weighs

the sludge and then dumps it into a second hopper. Lime is

then poured into the second hopper at a rate dependent upon

the weight of the sludge. The second hopper leads to a final

conveyor belt, which feeds the sludge into an enclosed

box-like structure called a “pugmill.” Inside the pugmill, a

series of intertwined rotating paddles mix the sludge with

the calcium oxide and advance the mixture towards an

opening on the other end. Notably, the pugmill has a safety

screen on top that allows the steam formed by the exothermi:

reaction to freely escape. The pugmill forces the mixture

out the second end for transport away from the site by truck

or railcar.

In November 1995, Manchak brought a patent

infringement suit in the United States District Court for the

District of Delaware against six defendants. When ordered

to select one defendant, Manchak chcse Sevenson. The

district court issued its claim construction opinion on May

1, 1997. On June 19, 1997, a jury found that Sevenson had

literally infringed ’003 claims 1, 2, 13, and 14 and awarded

damages of $975,000. Because it found literal infringement,

the jury skipped the questions of infringement by equivalents

as the district court had instructed.’

1. The jury also found the ’003 patent to be enforceable and

not invalid, i.e., not anticipated, obvious) or not enabled. In January

(Cont’d)

Appendix A

After the verdict, Sevenson renewed its motion for

judgment as a matter of law of no literal infringement. On

February 26, 1998, the district court granted Sevenson’s

motion with respect to claims 13 and 14, but denied it with

respect to claims 1 and 2. The district court also invoked

Rule 50(b) of the Federal Rules of Civil Procedure to find,

in the alternative, that Sevenson had infringed claims | and

2 under the doctrine of equivalents. On June 26, 1998, after

realizing that Manchak had never actually moved post-trial

for judgment of infringement as a matter of law, the district

court re-labeled its finding of infringement by equivalents

as arising under Rule 49(a). The district court also declared

‘the case to be “exceptional,” and awarded Manchak

$18,990.55 in attorney fees. This court has jurisdiction over

this appeal under 28 U.S.C. § 1295(a)(1) (1994).

II.

A district court’s construction of disputed claim terms

is a question of law subject to plenary review on appeal. See

Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456, 46

USPQ2d 1169, 1174 (Fed. Cir. 1998) (en banc). This court

owes no deference to a jury verdict based on an improper

claim construction, especially where the correct construction

(Cont'd)

1998, after the jury had reached its verdict but before the district

court had ruled on the parties’ post-trial motions, the Patent and

Trademark Office ordered the reexamination of the ’003 patent. On

April 7, 1999, the examiner issued a Notice of Intent to Issue

Reexamination Certificate, thereby confirming the patentability of

the claimed invention. Sevenson does not appeal the jury’s findings

regarding enforceability or validity.

ee ee ee eee a oe

hacer aa

Appendix A

of the claims is dispositive on the issue of infringement. See

Strattec Security Corp. v. General Automotive Specialty Co.,

126 F.3d 1411, 1419, 44 USPQ2d 1030, 1036 (Fed. Cir.

1997).

In its May 1, 1997 claim construction opinion, the district

court construed the term “confined space” in claims 1 and 2

as:

An elongate space that must confine the reaction

product of calcium oxide and sludge. However,

steam produced as a result of the reaction between

calcium oxide and water in the sludge need not

be so confined.

Sevenson contends that the district court erroneously

construed “confined space” as only confining the reaction

product of calcium oxide and sludge. Sevenson argues that

the claims themselves, the written description, and the

prosecution history establish that the “confined space” must

confine steam. Because the pugmills that Sevenson used in

its Maectite process indisputably lack a steam-confining top,

Sevenson maintains that it cannot literally infringe upon

claims | and 2 of the ’003 patent. We agree.

The plain language of the claims themselves

demonstrates that the “confined space” must also confine

steam. Nothing in claim 1 suggests that “confined space” be

narrowly construed as confining only reaction product of

calcium oxide and sludge, but not steam. “Without an express

intent to impart a novel meaning to claim terms, an inventor’s

claims take on their ordinary meaning.” York Prods.. Inc. y.

Appendix A

Central Tractor Farm & Family Ctr., 99 F.3d 1568, 1572,

40 USPQ2d 1619, 1622 (Fed. Cir. 1996). The step of

“withdrawing said steam from confined space” in claim 1

/ also would make little sense if the steam were not confined

| in the space to begin with.

The district court’s definition of “confined space” further

conflicts with claims 5 and 7, which recite:

5. The method as defined in claim 1 in which

said confined space is of such depth that a

longitudinally extending space is provided in

said confined space into which said steam can

accumulate, and said longitudinally extending

confined space in communication with a

passage through which said steam may flow

1o the exterior of said confined space.

ae ee ae et ee eee ee

Ae ae ee RO a eae eee ae

6. The method as defined in claim 5 which

includes the further step of:

h. blowing a stream of air across said passage

and) substantially normal thereto to

withdraw said steam from said

longitudinally extending space.

7. The method as defined in claim 6 which

includes the further step of:

i. directing the mixture of air and steam

through a spray of water to remove foreign

particled material from said steam prior to

Appendix A

said air and uncondensed steam being

discharged to the ambient atmosphere.

(Emphasis added.) Claim 5 requires that the “confined space”

be of sufficient depth to allow steam to accumulate and

provides a “passage” through which steam may “flow” to

the exterior. These limitations presuppose a steam-confining

top, but the only structure in claim 5 that can provide this

top is the “elongate confined space” limitation of claim 1.

Claim 5 does not otherwise add any new structure that would

force steam to accumulate in, rather than passively rise out

of, “said confined space.” Claim 6 blows the steam out of

the confined space via the passage provided in claim 5 to

“withdraw” it. Claim 7 further recites the “discharge” of

accumulated steam to the “ambient atmosphere” after

washing away particulate matter with water. This limitation

would also make little sense unless the “said confined space”

of claim 1 already prevented the steam from entering the

‘ambient atmosphere.”

The written description tends to confirm this

interpretation. It mentions the term “confined” in only one

other context, i.e., “sumps are covered with plastic sheet or

other impervious sheet to confine the smell.” ’003 patent,

col. 7, II. 36-37 (emphasis added). Since an inventor is

presumed to have intended a consistent meaning for a term

used in different portions of the written description,

Manchak’s illustration of a plastic sheet as “confining” gases

implies that the “confined space” should also “confine”

steam.

Finally, the prosecution history also tends to reinforce

our interpretation of “confined space” as also confining

10a

Appendix A

steam. During the prosecution of the 003 patent, the

examiner cited U.S. Patent No. 3,476,873 to Liljegren (“the

"873 patent”). The ’873 patent teaches the treatment of

sewage with lime involving the pre-treatment of the sewage

in “one or more sedimentation and/or flotation pools.” ’873

patent, col. 2, II. 38-39. To distinguish claim 1 over the ’873

patent, Manchak explained that “applicant requires no

sedimentation and/or flotation pools” and, more significantly,

advised that “[d]uring the reaction steam is formed in the

confined space and removed therefrom.” (Emphasis added.)

Logically, steam cannot be “formed in the confined space”

if the “confined space” does not also confine steam.

Moreover, unless confined, steam would hardly need to be

“removed therefrom.”

The district court’s unusual construction of “confined

space” primarily resulted from its oversight of two sound

principles of patent law. First, the district court held that

independent claim 1 could not read on any process for

allowing steam to accumulate in the elongate space, since

the accumulation of steam in such space was a limitation

appearing only in dependent claim 5. As this court has

previously recognized, however, “[i]t is axiomatic that

dependent claims cannot be found infringed unless the claims

from which they depend have been found to have been

infringed.” Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d

1546, 1553, 10 USPQ2d 1201, 1208 (Fed. Cir. 1989). The

district court also improperly refused to consider the

embodiment depicted in Figure 14 and described in columns

8 through 10 to aid its construction of “confined space,” since

it incorrectly assumed that the written description required

more limitations than set forth in claim 1. The district court

lla

Appendix A

seemingly ignored this court’s repeated statement that

“[c]laims must be read in view of the specification, of which

they are a part.” Markman v. Westview Instruments, Inc., 52

F.3d 967, 976, 34 USPQ2d 1321, 1326 (Fed. Cir. 1995) (en

banc), aff'd, 517 U.S. 370 (1996).

Manchak advances several arguments to defend the

district court’s interpretation of “confined space.” First,

Manchak notes that dependent claim 5 requires that steam

accumulate in the “longitudinally extending space” created

by adding depth to the “confined space.” Manchak argues

that if the “confined space” of claim 1 also confines steam,

dependent claim 5 would be superfluous. Under the doctrine

of claim differentiation, a claim should not ordinarily be

construed in such a manner that would render a related

dependent claim superfluous. See Comark Communications,

Inc. v. Harris Corp., 156 F.3d 1182, 1187, 48 USPQ2d 1001, -

1005 (Fed. Cir. 1998).

As we noted in Comark, however, “the doctrine of claim

differentiation is not a hard and fast rule of construction.”

Id., 156 F.3d at 1187, 48 USPQ2d at 1005. Rather, the

doctrine is inapplicable where one or more added limitations

distinguishes the allegedly superfluous dependent claim from

its parent independent claim. See Mantech Envtl. Corp. v.

Hudson Envtl. Servs., 152 F.3d 1368, 1376, 47 USPQ2d

1732, 1739 (Fed. Cir. 1998). Here, claims 5, 6, and 7 are

distinguishable from claim 1 by their respective additions

of a passage and increased depth to create a “longitudinally

extending space,” blowing step (h), and directing and steam-

discharging step (i).

12a

Appendix A

Manchak also advances the well-known principle that

“claims are not to be interpreted by adding limitations

appearing only in the specification. ... [A]Ilthough the

specification may well indicate that certain embodiments are

preferred, particular embodiments appearing in [the]

specification will not be read into the claims when the claim

language is broader than such embodiments.” Electro Med.

Sys. S.A. v. Cooper Life Sciences, 34 F.3d 1048, 1054, 32

USPQ2d 1017, 1021 (Fed. Cir. 1994) (citations omitted).

Manchak argues that interpreting the “confined space”

limitation as also confining steam would improperly

incorporate the limitations of the preferred embodiment

depicted in Figure 14 into claim 1.

We reject Manchak’s characterization of our

interpretation as erroneously reading limitations from the

written description into the claim. Though columns 8 through

10 and Figure 14 of the ’003 patent provide the only support

for the method recited in claims | and 2, they nowhere

describe a “confined space” as confining the reaction product,

but not steam. As Sevenson properly notes, accepting

Manchak’s expansive construction of “confined space”

would yield the anomaly of a specification that nowhere

describes or depicts a single embodiment illustrating such

breadth of interpretation. See Laitram Corp. v. Morehouse

Indus., 143 F.3d 1456, 1463, 46 USPQ2d 1609, 1614 (Fed.

Cir. 1993) (viewing it as relevant that nothing in the written

description suggests the rejected construction). Furthermore,

“confined space” is a limitation contained in claim 1, not a

feature shown only in the specification. Thus, while the

meaning of “confined space” must be gleaned from the claims

and the written description, our construction does not import

13a

Appendix A

the term from the specification into claim 1, since it is

already there.

ITT.

Our conclusion that the district court erred in its

interpretation of “confined space,” and thus in its denial of

judgment as a matter of law of no literal infringement, does

not end our inquiry. After the verdict, the district court

alternatively found that Sevenson had infringed claims 1 and

2 of the ’003 patent under the doctrine of equivalents. Though

it originally invoked Rule 50(b) for its finding, the district

court subsequently re-labeled its finding as arising under

Rule 49(a) after realizing that Manchak had not moved for

judgment as a matter of law of infringement before the

verdict.

Manchak does not dispute the fact that the pugmills used

in the Maectite process allow steam to freely escape into the

ambient atmosphere. Given our interpretation of “confined

space” as requiring a steam-confining top, no reasonable

factfinder could find that the pugmills in this case are

insubstantially different from the “confined space” of

claim 1. See Sage Prods., Inc. v. Devon Indus., Inc., 126

F.3d 1420, 1424, 44 USPQ2d 1103, 1106 (Fed. Cir. 1997).

Rather, a limitation — a space that confines both reaction

product and steam — is entirely missing in contravention of

the All Limitations Rule. See Warner-Jenkinson Co. v. Hilton

Davis Chem. Co., 520 U.S. 17, 29-30 (1997); Pennwalt Corp.

v. Durand-Wayland, Inc., 833 F.2d 931, 939, 4 USPQ2d

1737, 1743 (Fed. Cir. 1987) (en banc). We therefore hold

that the Sevenson cannot infringe claims 1 and 2 of the ’003

patent under the doctrine of equivalents as a matter of law.

l4a

Appendix A

IV.

In light of our holdings that the pugmills used in the

Maectite process cannot satisfy the “confined space”

limitation of claims 1 and 2 either literally or under the

doctrine of equivalents, we need not reach Sevenson’s

contention that the district court erred in its construction of

“initiated” and in invoking Rule 49(a) or that Manchak’s

representations during the reexamination proceedings

warrant remand. Moreover, as we did not consider

Manchak’s representations before the PTO in construing the

“confined space” limitation, we decline Manchak’s invitation

to sanction Sevenson or dismiss this appeal due to Sevenson’s

inclusion of references to the reexamination proceedings in

its briefs. Finally, the damages judgment naturally falls with

our reversal of the infringement findings, as does the award

of attorney fees. See Rodime PLC v. Seagate Tech., Inc.,

174 F.3d 1294, 1308, 50 USPQ2d 1429, 1439 (Fed. Cir.

1999).

Accordingly, the judgment is in all respects reversed.

15a

APPENDIX B — MEMORANDUM OPINION OF THE

UNITED STATES DISTRICT COURT FOR THE

DISTRICT OF DELAWARE DATED MAY 1, 1997

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF DELAWARE

Civil Action No. 95-709-RRM

FRANK MANCHAK, JR.,

Plaintiff,

CHEMICAL WASTE MANAGEMENT, INC., RUST

REMEDIAL SERVICES INC., WHEELABRATOR

ENVIRONMENTAL SYSTEMS, INC., LAIDLAW

ENVIRONMENTAL SERVICES INC., SEVENSON

ENVIRONMENTAL SERVICES, INC., and

VFL TECHNOLOGY CORPORATION,

Defendants.

MEMORANDUM OPINION

* oe oe

Dated: May 1, 1997

McKELVIE, District Judge

This is a patent case. Plaintiff Frank Manchak, Jn, a

resident of Santa Barbara, California, is the owner of U.S.

16a

Appendix B

Patent No. 4,079,003 (“the ’003 patent’), which is directed

toward processes for treating various forms of sludges and

converting them into disposable, solid forms. Defendant

Sevenson Environmental Services, Inc. is a Delaware

corporation with a place of business in Niagara Falls, New

York. Defendant Chemical Waste Management, Inc. is a

Delaware corporation with a place of business in Oak Brook,

Illinois. Defendant Rust Remedial Services Inc. is a Delaware

corporation with a place of business in Birmingham,

Alabama. Defendant Wheelabrator Environmental Systems

Inc. is a Delaware corporation with a place of business in

Hampton, New Hampshire. Defendant Laidlaw Environmental

Services Inc. is a Delaware corporation with a place of

business in Columbia, South Carolina. Defendant VFL

Technology Corporation is a Pennsylvania corporation with

a place of business in Malvern, Pennsylvania.

1. Factual Background and Procedural History

On November 16, 1995, Manchak filed a complaint in

this court alleging that all of the defendants either literally

infringed, actively induced the infringement of, or

contributed to the infringement of the ’003 patent by making,

using, or selling processes taught by the ’003 patent.

Additionally, Manchak alleged that Chemical Waste

Management, Inc. willfully infringed the ’003 patent. All

defendants denied liability and raised an affirmative defense

that the ’003 patent is invalid. Chemical Waste Management,

Inc., Rust Remedial Services Inc., Wheelabrator

Environmental Systems Inc., and VFL Technology

Corporation raised an affirmative defense that the ’003 patent

is unenforceable. VFL Technology Corporation and Laidlaw

17a

Appendix B

Environmental Services Inc. counterclaimed for declaratory

judgments that they have not infringed the ’003 patent and

that the 003 patent is invalid and unenforceable.

During a teleconference with the parties on June 17,

1996, the court ordered Manchak to proceed against only

one of the defendants. The court reasoned that Manchak

would be able to bring the case to trial more expeditiously

against one defendant, because he would not be burdened

by the demands of taking discovery from the other five

defendants. The court also ordered all discovery and other

proceedings stayed with respect to the remaining five

defendants. Manchak subsequently elected to proceed against

Sevenson. Manchak and Sevenson then completed both

expert and fact discovery on December 31, 1996.

On January 14-16, 1997, the court presided over a trial

on claim construction to resolve the meaning of disputed

terms in claims 1 and 13 of the ’003 patent. The parties fully

briefed claim construction issues prior to the trial. A ten-day

jury trial is scheduled to begin on June 9, 1997.

Accordingly, this memorandum opinion constitutes the

court’s findings on the meaning of the disputed terms in

claims | and 13 of the ’003 patent.

II. The Technology At Issue and United States Patent

No. 4,079,003

Unless otherwise noted, the following facts are drawn

from the prosecution histories of the ’003 patent and U.S.

Patent No. 4,028,240, a patent owned by Manchak which is

directed to sump treatment processes.

18a

Appendix B

Claims 1 and 13 are apparently the only claims of the

°003 patent at issue in this case. Claim | is directed to a

process for treating “aqueous organic solutions containing

sludge” with calcium oxide, which is commonly referred to

as limestone or quick lime. Claim 13 is a dependent claim,

directed to a process taught by claim | in which the “major

portion” of the sludge being treated is “of marine origin.”

As discussed in the specification of the °003 patent, the

claimed invention may be used to convert sludges and toxic

materials contained within the sludge into a solid form. This

solid material can then disposed of easily in landfills or, after

being neutralized with acid, used for agricultural purposes.

See col. 10, lines 3-7.

On October 15, 1973, Manchak applied for a patent

directed toward a method for using calcium oxide to

neutralize hazardous organic materials in sumps.

Industries and municipal waste facilities often produce

waste products containing water-based suspensions of

organic and inorganic materials, which are commonly

referred to as sludges. These sludges may contain water-

soluble toxic metals, such as cadmium, or bacteria and

viruses that produce odors.

One method of neutralizing the toxic metals, bacteria,

and viruses that may be present in the sludge is through the

use of calcium oxide. When calcium oxide is mixed with

sludge, it chemically reacts with water present in the sludge.

The resulting chemical reaction generates heat. The heat

evaporates the water into steam, drying out the sludge.

Calcium hydroxide is also formed. The presence of calcium

19a

Appendix B

hydroxide raises the pH of the calcium oxide/sludge mixture

to a highly-alkaline level. This rise in alkalinity not only

neutralizes any odor-forming bacteria that might be present

in the sludge, but also converts toxic metals into insoluble

forms. Consequently, the chemical reaction of sludge and

calcium oxide produces a solid, dry reaction product that

can be safely disposed.

Claims 1-7 of Manchak’s application were process

claims, reading on treatment procedures in which calcium

oxide is used to treat various types of sumps. Claim 1 teaches

a five-step process for treating oil field sumps with calcium

oxide. Claim 2, a dependent claim, recites a process in which

the mixture of oil and calcium oxide specified in claim 1 are

dried “in a layer exposed to the atmosphere.” Claim 3 teaches

a two-step method for treating sewage sumps with calcium

oxide. Claim 4-6 recite multi-step processes for treating

sumps with calcium oxide. Claim 7 teaches a six-step method

of converting liquid or pasty sump contents into soil.

Claims 8-15 were apparatus claims, reading on machines

used to transport calcium oxide into the sumps.

On July 15, 1974, the examiner rejected claims 1 and 2

as obvious based on the Liljegren patent in light of the Hess

et al patent. The Liljegren patent, U.S. Patent No. 3,476,683,

teaches a method of separating inorganic impurities from

sewage. The Hess et al. patent, U.S. Patent No. 3,716,474,

teaches a method of treating oil in a disposal pit. The

examiner concluded that it would be “obvious to apply the

process of [ Liljegren] to the oil disposal pit [method] of [Hess

et al.].”

20a

Appendix B

Claims 3-6 were rejected as obvious in light of Liljegren.

The examiner concluded that considering Liljegren’s method

of treating sewage, it would be obvious to transport calcium

oxide to sump pits containing sewage sludge. Claim 7 was

rejected as obvious based on Liljegren in light of the

Behringer patent. Behringer, U.S. Patent No. 2,297,195,

teaches a method for reducing the alkalinity of certain forms

of sewage. The examiner reasoned that it would be obvious

to combine Liljegren’s treatment method with Behringer’s.

On July 15, 1974, Manchak voluntarily withdrew his

apparatus claims.

After Manchak subsequently attempted to distinguish

over the prior art cited by the examiner, on November 20,

1974, the examiner issued a final rejection of claims 1-7,

reaffirming his earlier finding of obviousness.

On February 18, 1975, Manchak appealed the examiner’s

ruling with respect to claims 1-7 to the Board of Appeals of

the United States Patent and Trademark Office. On March

18, 1975, Manchak voluntarily canceled claim 7. On August

8, 1975, Manchak canceled claim 3.

While still awaiting a decision by the Board of Appeals

on whether it was proper for the examiner to reject claims 1,

2, 4, 5 and 6 as obvious, Manchak filed a second patent

application on June 1, 1976. The second application was filed

as a continuation-in-part of Manchak’s October 15, 1973

application.

The June 1, 1976 application contained 26 claims.

Claims 1-8 were a restatement of the apparatus claims that

ee ee shee eee ae

2la

Appendix B

Manchak voluntarily withdrew on July 15, 1974. Claims 20-

21 were product claims for the reaction product produced as

the result of the calcium oxide/sludge interaction. Claims

22-26 were apparatus claims for an apparatus to transform

aqueous sludge into a reaction product.

Claims 9-19 were process claims for treating aqueous

Sludge with calcium oxide. Claim 9 teaches a seven-step

method in which calcium oxide is mixed with the sludge in

a confined space. Claims 10-19 are dependent on claim 9.

Claim 10 limits the alkalinity of the calcium oxide/sludge

mixture to a pH of at least 11. Claim 11 specifies that the

alkalinity of the mixture must be hi gh enough to destroy any

bacteria or virus present in the sludge. Claim 12 teaches a

method in which the reaction of calcium oxide and sludge

creates a “hard agglomerated friable solid.” Claim 13 teaches

that the alkalinity of the mixture must be high enough to

turn toxic metals present in the sludge into insoluble

compounds. Claims 14-15 add processes for treating steam

produced as a result of the sludge/calcium oxide reaction.

Claims 16-17 specify methods for decreasing the water

content of the sludge. Claim 18 teaches a method of stirring

the sludge before it is mixed with calcium oxide. Claim 19

teaches a method in which any odor produced by bacteria

present in the sludge is eliminated.

On September 27, 1976, the Board of Appeals reversed

the decision of the examiner with respect to claims 1 and 2

of Manchak’s original application. These claims

subsequently issued as claims 1 and 2 of U.S. Patent No.

4,028,240 on June 7, 1977.

22a

Appendix B

On December 1, 1976, the examiner of Manchak’s

continuation-in-part application rejected claims 9-19. Claims

9-15 and 19 were rejected as obvious in light of Liljegren.

The examiner determined that it was obvious to modify the

process claimed by Liljegren “to carry out lime addition

process in elongate space under continuous mixing

parameters . . . washing and filtering of steam also obvious.”

Claims 16 and 17 were rejected as obvious based on Liljegren

in combination with Baumann et al. Baumann et al., U.S.

Patent No. 3,342,731, apparently teaches a method of using

fly ash to reduce the concentration of water in sludge. The

examiner reasoned that it was obvious to modify Liljegren’s

method by adding fly ash. Claim 18 was rejected as obvious

based on Liljegren and for lack of definiteness, pursuant to

35 U.S.C. § 112.

On December 1, 1976, Manchak withdrew claims 1-8

and 20-26.

On March 11, 1977, Manchak responded to the

examiner’s initial action by canceling claims 1-26. In an

effort to distinguish his invention over Liljegren and

Baumann et al., he added new claims 27-43. Manchak argued

in particular that new claim 27 “wouid not be obvious in

view of Liljegren for applicant requires no sedimentation

and/or flotation pools nor does he require mechanical

dewatering of sludge as required in the Liljegren device.”

On June 2, 1977, the examiner rejected claims 27-41 as

obvious in light of the claims of the soon-to-be issued ’240

patent. On July 20, 1977, Manchak filed a terminal disclaimer

with the PTO. The terminal disclaimer specified that “any

23a

Appendix B

patent granted on this application shall be enforceable only

for and during such period that said patent is commonly

owned with patent no. 4,028,240....”

On March 14, 1978, U.S. Patent No. 4,079,003 issued.

Claims 27-41 issued as claims 1-15 of the ’003 patent.

As issued, claim 1 of the ’003 patent is directed toward

a specific process for treating water-based sludges containing

organic materials. It reads as follows:

1. A method of transforming aqueous organic

material containing sludge that may include virus

and odor forming bacteria and toxic soluble

compounds that are converted to substantially

insoluble compounds in an alkaline environment

into a solid, friable, and substantially odor free

reaction product, said method comprising the

steps of:

a. sequentially moving said sludge

from a source thereof at a first rate;

b. sequentially moving calcuim [sic]

oxide from a source thereof at a second

rate, with said second rate so related to

said first rate that when sludge and

calcium oxide are mixed an exothermic

reaction is initialed [sic] in which said

sludge and calcium oxide react with the

evolution of steam to form a solid

friable, substantially odor free reaction

24a

Appendix B

product that has a pH of at least 12 and

in which bacteria and virus initially

present in said sludge are deactivated

by said pH and the heat of said

exothermic reaction, and said soluble

toxic compounds initially present in said

sludge are transformed to substantially

water insoluble compounds due to the

high pH of the mixture of said sludge

and calcium oxide as they transform to

said reaction product;

c. providing an elongate confined space

that has first and second ends;

d. directing said sludge and calcium

oxide at said first and second rates into

said first end of said confined space;

e. concurrently mixing and moving the

mixture of said sludge and calcium

oxidé in said confined space from said

first end towards said second end

thereof, with the rate of longitudinal

movement of said mixture in said

confined space being such that said

exothermic reaction has transformed

said mixture to said reaction product by

the time said reaction product has

reached said second end;

f. withdrawing said steam from said

confined space; and

ee ses ee SNe te ee * bal nt *

oes. ee

25a

Appendix B

g. sequentially removing said reaction

product from said second end of said

confined space.

An example of the sludge treatment process taught by

claim 1 is depicted in Figure 14 of the ’003 patent’s

specification. Of the 16 figures depicted by the ’003 patent,

the parties apparently agree that Figure 14 more closely

approximates Sevenson’s alleged infringing process than do

the other figures.

U.S. Patent March 14.1978 Sbeer 4 of 4 4,079,003

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F/IG./14

According to the specification of the ’003 patent, in

Figure 14 sludge is extracted from a disposal site and poured

into a hopper that extends outward from an apparatus.

Preferably, at least 25% of the sludge (by weight) consists

of solid materials. Col. 9, lines 13-15. Calcium oxide, which

is commonly known as limestone or quick lime, is poured

26a

Appendix B

down a second hopper that also extends outward from the

apparatus. The sludge and calcium oxide are then directed

into a “confined space” at sequentially ordered rates in order

to facilitate a chemical reaction. Col. 9, lines 25-27.

Upon being directed into the confined space of the

apparatus, the sludge and calcium oxide react chemically in

the manner described above. As the sludge becomes

dehydrated by the evaporation of liquid water into steam, it

is transformed into an “agglomerated, solid [and] friable”

(col. 9, line 45) substance that, after being moved out of the

elongate confined space where the reaction takes place, can

(among other things) be disposed of in a landfill or

neutralized with acid for use in agricultural operations.

The production of calcium hydroxide raises the pH of

the initial sludge/calcium oxide mixture to at least 12.4. At

that pH level, odor-forming bacteria or viruses present in

the sludge are “destroy[ed]” (col. 9, line 41) and any toxic

metals present in sludge are converted into insoluble forms.

The heat produced by the reaction of water and calcium oxide

also contributes to the destruction of bacteria and virus that

may be present in the sludge.

Steam produced as the result of the reaction between

the water in the sludge and the calcium oxide is propelled

by a fan up a chute in the apparatus. The steam, which

presumably contains some solid particles at that point, is

treated with a fine water spray, moves through a filter, and

then exits the apparatus into the surrounding environment.

Col. 9, lines 3-6.

Sey wee RRA ANID anti At Hale TE el Ri errant eSz REL MN 9

27a

Appendix B

Ill. Discussion

A. Claims of the ’003 Patent that the Court Will

Construe

Claim 1 of the ’003 patent is an independent claim

directed to a seven-step sludge treatment process that is a

somewhat simplified version of the embodiment that is

depicted in Figure 14 (which appears to be an apparatus

constructed along the lines of the teachings of claims 1, 2,

5, 6, 7, and 9). Only four of the treatment steps appear to be

at issue in this case. These steps are as follows:

1. A method of transforming aqueous organic

material containing sludge that may include virus

and odor forming bacteria and toxic soluble

compounds that are converted to substantially

insoluble compounds in an alkaline environment

into a solid, friable, and substantially odor free

reaction product, said method comprising the

steps of:

b. sequentially moving calcuim [sic]

oxide from a source thereof at a second

rate, with said second rate so related to

said first rate that when sludge and

calcium oxide are mixed an exothermic

reaction is initialed [sic] in which said

sludge and calcium oxide react with the

evolution of steam to form a solid,

28a

Appendix B

friable, substantially odor free reaction

product that has a pH of at-least 12 and

in which bacteria and virus initially

present in said sludge are deactivated

by said pH and the heat of said

exothermic reaction, and said soluble

toxic compounds initially present in said

sludge are transformed to substantially

water insoluble compounds due to the

high pH of the mixture of said sludge

and calcium oxide as they transform to

said reaction product;

c. providing an elongate confined space

that has first and second ends; [and]

f. withdrawing said steam from said

confined space ....

Dependent claim 13 has the required elements of claim |

and the additional requirement that the “major portion” of

the sludge be of “marine origin.” It reads as follows:

The method as defined in claim 1 in which the

major portion of said sludge is of marine origin.

On January 14-16, 1997, the court presided over a trial

concerning the construction of claims 1 and 13 of the 003

patent. The court heard argument from the parties and

~ testimony from the following individuals: Rene D.

——

29a

Appendix B

Tegtmeyer, a former patent examiner at the United States

Patent and Trademark Office, who has been retained by

Sevenson as its patent law expert; Dr. G. Lee Christensen,

Sevenson’s technical expert, who is the Edward A. Daylor

Professor of Environmental Engineering at Villanova

University in Villanova, Pennsylvania; and Dr. Ronald D.

Neufeld, plaintiff's technical expert, who is a Professor of

Civil Engineering at the University of Pittsburgh in

Pittsburgh, Pennsylvania.

B. Claim Construction

Claim construction is a matter for the court. Markman

v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir.

1995) (en banc), aff'd, 116 S. Ct. 1384 (1996). A court

undertakes the task of claim construction only if the parties

raise a genuine dispute about the meaning of claim terms.

See United States Surgical Corp. v. Ethicon, Inc., 103 F.3d

1554, 1568 (Fed. Cir. 1997); see also Elf Atochem North

Am., Inc. v. Libbey-Owens-Ford Co., 894 F. Supp. 844, 858

(D. Del. 1995).

In construing patent claims, a court must first evaluate

the claims of the particular patent, both those that are asserted

in the litigation and those that are unasserted: the patent’s

specification; and the patent’s prosecution history. If the

terms of the claims are not defined by the patent holder in

either the patent’s specification or its prosecution history,

then the court must define the terms according to their

ordinary meaning. Vitronics Corp. v. Conceptronic, Inc., 90

F.3d 1576, 1582 (Fed. Cir. 1996). In determining the terms’

ordinary meaning, the court may consult both general and

30a

Appendix B

technical dictionaries to aid it in its construction efforts. See

id at 1584 n.6; Athletic Alternatives, inc. v. Prince Mfg., Inc.,

73 F.3d 1573, 1578 (Fed. Cir. 1996) (employing definitions

from a general dictionary to construe claim terms); Quantum

Corp. v. Rodime, PLC, 65 F.3d 1577, 1581 (Fed. Cir. 1995)

(“[ W]e see no error in the district court’s use of dictionary

definitions to ascertain the ordinary meaning of the relevant

claim limitation.”), cert. denied, 116 S. Ct. 1567 (1996). In

construing the terms of a claim, moreover, a court may use

established canons of claim construction, such as the doctrine

of claim differentiation. Athletic Alternatives, Inc., 73 F.3d

at 1578.

If the court’s analysis of the intrinsic evidence — the

claim terms themselves, the patent’s specification, and the

prosecution history — fails to yield any conclusive

construction results, the court may then consult extrinsic

evidence, such as expert testimony and prior art, to aid it in

its construction efforts. Vitronics, 90 F.3d at 1584. Extrinsic

evidence may also be considered if needed to assist the court

in understanding the technology at issue or in determining

the meaning or scope of technical terms in a claim. See

Hoechst Celanese Corp. v. BP Chemicals Ltd., 78 F.3d 1575,

1579 (Fed. Cir.), cert. denied, 117 S. Ct. 275 (1996).

1. What were the skills and qualifications of

individuals with ordinary skill in the art of

sludge treatment in 1976?

Before construing the genuinely disputed terms of claims

1 and 13 of the ’003 patent, the court must, as a threshold

matter, determine the requisite educational level and work

3la

Appendix B

experience for one with ordinary skill in the art taught by

the 003 patent. The parties agree that the art in question is

the treatment of sludge.

To determine what constitutes the ordinary skill in an

art, the court considers several factors, including: “ ‘{the]

type of problems encountered in the art; prior art solutions

to those problems; rapidity with which innovations [in the

art] are made; sophistication of the technology; and

educational level of active workers in the field.’ ” Jn re GPAC

Inc., 57 F.3d 1573, 1578 (Fed. Cir. 1995) (quoting Custom

Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955,

962 (Fed. Cir. 1986)).

Dr. G. Lee Christensen, Sevenson’s technical expert,

who is the Edward A. Daylor Professor of Environmental

Engineering at Villanova University, testified on direct

examination that one with ordinary skill in the art of sludge

treatment in 1976 would be “somebody with a Master’s

degree in environmental engineering, with probably five

years of experience [in the treatment of sludge and] is the

kind of person who would be making decisions and

discoveries and innovations connected with sludge

processing disposal in 1976.”

Dr. Ronald D. Neufeld, Manchak’s technical expert, who

is a Professor of Civil Engineering at the University of

Pittsburgh, presented a much different description of one with

ordinary skill in the art of sludge treatment in 1976. Such an

individual, Dr. Neufeld testified, would be employed as a

project manager by an environmental remediation company.

Dr. Neufeld testified on direct examination that after

32a

Appendix B

considering the limited formal educational level of both

workers in the art and the patent’s inventor (who does not

have any formal education beyond the seventh grade), the

low level of sophistication of sludge treatment technology,

and the slow advancement in the sludge treatment field, he

would describe the level of ordinary skill in the art in 1976

as follows:

I believe a person [of ordinary skill in the art]

should have a skill of an experience in

understanding the nature of the sludge-handling

problem. That person has to have a skill to be able

to obtain information that may be beyond his

formal education. That person has to have [ } an

inquisitive mind and the ability to learn.

Dr. Neufeld emphasized during his direct examination that

it would not be necessary for one with ordinary skill in the

art of sludge treatment in 1976 to have had any formal

education beyond high school. Additionally, Dr. Neufeld

testified that a project manager with ordinary skill in the art

would not need to have worked for a minimum number of

years in the industry in order to reach the level of one with

ordinary skill in the art.

After evaluating the testimonies of Drs. Christensen and

Neufeld, the court finds that Dr. Neufeld’s definition of one

with ordinary skill in the art of sludge treatment in 1976 is

more appropriate for the following reasons. First, Dr.

Christensen’s definition would create an anomalous result:

the classification of Manchak, an individual who does have

any formal education beyond the seventh grade, as one who

33a

Appendix B

does not have ordinary skill in the art. See, e.g., Ryko Mfg.

Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)

(stating that the district court could consider the educational

level of the inventor probative for the purpose of determining

the level of ordinary skill in the art); Bausch & Lomb, Inc. v.

Barnes-Hind/Hydrocurve, Inc., 796 F.2d 443, 448 (Fed. Cir.

1986) (“Inventors, as a class, according to the concepts

underlying the Constitution and the statutes that have created

the patent system, possess something — call it what you

will — which sets them apart from the workers of ordinary

skill... .”), cert. denied, 484 U.S. 823 (1987).

Second, Dr. Neufeld testified that he evaluated several

of the factors considered relevant in a court’s determination

of the level of ordinary skill in an art — including the low

level of sophistication of sludge treatment technology and

the slow technological advances in this art — in formulating

his definition. Third, Dr. Neufeld’s approach toward

determining the ordinary skill in the art is more focused on

examining the skill level of project managers — as opposed

to Dr. Christensen’s focus on those experts who are

concerned primarily with academic studies of sludge

treatment processes.

The court does not accept, however, Dr. Neufeld’s

Suggestion that an individual need not have worked a

minimum number of years in the sludge treatment industry

to attain the level of one with ordinary skill in the art. While

the court can imagine a hypothetical worker with enough

industriousness to achieve an ordinary skill level straight

out of high school, the court finds that sludge removal

projects are sufficiently complicated such that a typical

34a

Appendix B

worker in this field will require some experience before he

or she can begin to master the art of designing sludge

treatment processes.

Accordingly, the court will adopt the following

definition of one with ordinary skill in the art of sludge

treatment in 1976:

A sludge removal project supervisor, who has

worked at least two years in the industry and

remains continually abreast of practical

innovations and technological developments in

the art of sludge treatment.

Having set out the level of ordinary skill in the art of

sludge treatment in 1976, the court will now endeavor to

construe the genuinely disputed terms of claims 1 and 13 of

the ’003 patent.

2. The court’s construction of genuinely disputed

terms of the ’003 patent

a. The construction of the phrase “aqueous

organic material containing sludge”

The phrase “aqueous organic material containing sludge”

appears in the preamble of claim 1 of the ’003 patent, prior

to the claim’s recitation of its seven required treatment steps.

The court notes that based on the testimony of the parties’

experts, there does not appear to be a genuine dispute about

the meaning of the terms “aqueous” and “organic material.”

35a

Appendix B

There may, however, be a genuine dispute as to the

meaning of the term “sludge.” Sevenson first argues that the

term, as used in the context of the phrase “aqueous organic

material containing sludge” in claim 1 of the ’003 patent is

indefinite under 35 U.S.C. § 112 and also constitutes

impermissible new matter because it was used for the first

time in Manchak’s March 1, 1977 amendment to his

continuation-in-part application. Second, Sevenson argues

that the construction of “sludge” should be limited as follows:

“The term sludge is limited to materials that when mixed

with other non-sludge materials forms a mixture containing

more than fifty percent sludge by weight.” Sevenson does

not specify the basis for such a construction. Third, Sevenson

appears to suggest that the term should be construed

according to claim 9 of Manchak’s continued application

(prior to amendment), which read: “A method of

transforming aqueous sludge of industrial, municipal or

marine origin . . . .” Sevenson apparently finds support for

such a limitation in the specification of the ’003 patent. See

col. 9, lines 20-24 (describing sludge from an “industrial or

municipal origin’).

Manchak counters by arguing that “sludge” should be

construed according to its ordinary meaning, because it is

not defined explicitly in the ’003 patent or its prosecution

history.

As for Sevenson’s first argument that the phrase

“aqueous organic material containing sludge” is indefinite

and constitutes impermissible new matter, the court finds

that it is improper to consider these defenses within the

context of claim construction. See Intervet Am. v. Kee-Vat

Labs., Inc., 887 F.2d 1050, 1053 (Fed. Cir. 1989).

36a

Appendix B

Sevenson’s second argument, that “sludge’’ must be

defined so as to require the “aqueous organic solution” to

contain fifty-percent sludge by weight, is not supported by

the specification of the ’003 patent. The specification’s

description of the embodiment depicted in Figure 14 is the

only reference in the ’003 patent to any requirement that

“sludge” must constitute a minimum percentage of the

aqueous organic solution: “The sludge to be transformed to

a reaction product preferably has a water content of not over

75 percent (75%) by weight.” Col. 9, lines 13-15. It is

established, however, that a patent’s preferred embodiment

should not be construed to limit the scope of the patent’s

claims. See Laitram Corp. v. Cambridge Wire Cloth Co.,

863 F.2d 855, 865 (Fed. Cir. 1988), cert. denied, 490 U.S.

1068 (1989). And even if the court were to find the

description of sludge in the ’003 patent’s embodiment

instructive for the purpose of claim construction, the court

notes that the water-content limitation expressed in the

embodiment is described as being a preferable water content, :

not an absolute restriction.

Sevenson’s third argument — that the sludge must be

of “industrial, municipal or marine origin” — is unsupported

by the specification of the patent. The specification notes

that the sludge “may have an industrial or municipal origin,”

(col. 9, lines 21-22) but does not limit the sludge’s origin to

those sources.

Thus, the term “sludge” is not explicitly defined in the

specification of the ’003 patent or its prosecution history.

However, the court heard testimony from Manchak’s

-technical expert that “sludge” has special technical

——eSae eee.

37a

Appendix B

Significance to one with ordinary skill in the art of sludge

treatment. Dr. Neufeld testified on direct examination that

the term “sludge” has special technical significance to one

with ordinary skill in the art of sludge treatment. Dr.

Christensen did not appear to dispute Dr. Neufeld’s

testimony. Therefore, the court will consider extrinsic

evidence to determine the term’s ordinary meaning.

Dr. Neufeld further testified on direct examination that

an individual with ordinary skill in the art of sludge treatment

in 1976 would consider the PTO’s Class 210 definition of

“sludge” to be an acceptable definition of that term.' The

PTO defines “sludge” as follows:

Concentrate of settled colloidal suspension with

a mushy or mud texture, a gel (with up to more

than 90 percent usually water) but quite viscous.

It may contain indiscriminate soils as grits, fiber,

wood chip, and emulsions. While still wet, treatment

is proper for this class, but the same material when

completely dry may be referred to as sludge.

1. For the purpose of conducting prior art searches, the PTO

“classifies the subject matter of inventions into over 400 different

classes of art, which are divided into over 100,000 subclasses.”

Arthur L. Plevy, How to Obtain Patents; Trademarks and

Copyrights, 161-JUN NJLAW 12, 13 (1994); see also 2 DONALD

S. CHISUM, sisal § 5.03[1}[a][iii] (1996).

_ The PTO siiitalit definitions pertaining to each class of art

in classification manuals. Plevy, 161-JUN NJLAW at 13. Class 210

was adopted by the PTO in 1957, and can be found on the PTO’s

web site at the following address: <http://patents.cnid...ses/us/210/

210.html>.

38a

Appendix B

The court further notes that Dr. Christensen, on cross

examination, agreed that this definition would generally be

acceptable to him. The court therefore adopts the PTO Class

210 definition of “sludge” as the ordinary meaning of the

term.

Accordingly, the court will construe the term “ sludge”

as follows:

Sludge is a concentrate of settled colloidal

suspension with a mushy or mud texture, a gel

(with up to more than 90 percent usually water)

but quite viscous. It may contain indiscriminate

soils as grits, fiber, wood chip and emulsions.

b. The construction of the phrase “substantially

insoluble compounds”

The phrase “substantially insoluble compounds” appears

in the preamble to claim 1, prior to the claim’s recitation of

its seven required sludge treatment steps. The court notes

that there does not appear to be a genuine dispute between

the parties as to the meaning of the terms “substantially”

and “compounds.”

Manchak argues that the term “insoluble” can be

construed according to its ordinary meaning as defined by a

general dictionary, because it is not explicitly defined in the

003 patent or its prosecution history.

However, Sevenson makes two arguments against this

proposed construction. First, Sevenson argues, contrary to

39a

Appendix B

the plain language of the term, that it should “not cover

substantially water insoluble compounds.” Sevenson does

not specify the basis for such a construction. Second,

Sevenson argues that the term “should not cover a process”

that would make the compounds insoluble in certain acids.

As support for its second argument, Sevenson cites to

testimony from Dr. Christensen. Dr. Christensen testified

on direct examination that it does not follow from the phrase

“substantially insoluble” that such a compound would be

soluble in both water and acid.

After evaluating the specification of the ’003 patent and

its prosecution history, the court finds that the term

“insoluble” is not specifically defined. However, because

the ’003 patent is apparently directed to processes designed

to transform toxic compounds into forms that will not pollute

water, the court finds that the solubility of the “compounds”

should be measured according to their ability to dissolve in

water. Additionally, the court notes that claim 1(b) explicitly

uses the term “water insoluble compounds.”

Thus, the court will construe the term “insoluble”

according to its ordinary meaning. “Soluble” is defined by

Webster's Third New International Dictionary 2190 (1986)

as “susceptible of being dissolved in or as if in a fluid.”

Consequently, the court’s construction of the phrase

“insoluble” is as follows:

Unable to be dissolved in water.

40a

Appendix B

c. The construction of the phrase “a solid,

friable, and substantially odor free reaction

product”

The phrase “‘a solid, friable, and substantially odor free

reaction product” also appears in the preamble to claim 1 of

the ’003 patent, prior to the claim’s recitation of its seven

required sludge treatment steps, and it modifies the term

“reaction product.” The parties do not dispute the meaning

of the terms “solid,” “substantially odor free,” and “reaction

product.”

As for the term “friable,” Sevenson argues that this term

must be construed so as to require that the reaction product

be dry. To support its proposed construction, it cites to the

specification of U.S. Patent No. 141,848, which was issued

to Albert F. Andrews on March 19, 1873. See Andrews,

col. 2, lines 14-16 (describing the treated material as being

“reduced to a dry condition”). Manchak argues that the term

should be construed according to its ordinary meaning,

because it is not otherwise defined in the ’003 patent or its

prosecution history.

To the extent that Sevenson is suggesting that the

reaction product must be completely free of water, this

construction is not supported by a description of the reaction

product in the “Description of the Prior Art” section of the

°003 patent’s background section: “The reaction product

retains a substantial quantity of initially present water as an

integral part thereof.” Col. 1, lines 58-60. Accordingly, the

court will not adopt Sevenson’s proposed limitation and will

instead construe the term according to its ordinary meaning,

4la

Appendix B

because the term is not specifically defined in the patent’s

specification or prosecution history.

“Friable” is defined by Webster’s Third New

International Dictionary 910 (1986) as follows: “[E]asily

crumbled, pulverized, or reduced to powder.” The court will

adopt this definition of “friable” the ordinary meaning of

the term.

Consequently, the court will construe the term “friable”

to mean:

Easily crumbled, pulverized, or reduced to

powder.

d. The construction of the term “inita[t]ed”

The term “initialed” appears in part (b) of claim 1 of the

'003 patent and is a required element within the second step

of the seven-step sludge treatment process taught by claim

1. The court notes that the parties agree that this term, as it

appears in claim 1, is a typographical error and should be

read as “initiated.”

The parties appear to agree that the term “initiated”

should be construed to mean “commenced.” However, they

disagree as to when the reaction between calcium oxide and

the water in the sludge should be “initiated.” Sevenson argues

that the initiation of the reaction must take place inside of

the “elongate confined space” of the treatment apparatus.

See col. 9, lines 25-30 (stating that sludge and calcium oxide

“are brought into physical contact in the rearward portion of

the confined space”).

42a

Appendix B

Manchak argues that the term should be construed

according to its ordinary meaning, because it 1s not explicitly

defined in the specification of the 003 patent or its

prosecution history. He does not appear to directly dispute

Sevenson’s proposed construction.

Claim 1(b), in which the term “initiated” appears, does

not specify where the reaction between calcium oxide and

the water in the sludge begins. However, claim 1(d) specifies

that sludge and calcium oxide (not a mixture of the two) are

“direct[ed]” into the first end of the elongate confined space.

Claim 1(d) therefore appears to teach that the sludge and

calcium oxide are not mixed together until they reach the

first end of the elongate confined space. The court also finds

support for such a construction in claim 1(e), which specifies

that the “mixing” of sludge and calcium oxide occurs in the

“said confined space.”

Consequently, the court will construe the term “initiated”

as follows:

Commenced in the first end of the elongate

confined space.

e. The construction of the phrase “pH of at

least 12”

The phrase “pH of at least 12” appears in claim 1(b) of

the 003 patent and is a limitation on the level of acidity of

the reaction product produced as the result of mixing together

sludge and calcium oxide.

EEE

— °°»

43a

Appendix B

Sevenson argues that the term should be read as “pH of

at least 12.4” because the embodiment of the ’003 patent

depicted in Figure 14 refers to the pH of the reaction product

as being at least 12.4. See col. 9, line 39. Sevenson also argues

that there is no basis in Manchak’s June 1, 1976 application

for the limitation “pH of at least 12” to appear in claim 1(b).

It claims that the limitation is impermissible new matter,

because Manchak first added the phrase to his continuation-

in-part application on March 1, 1977 (the date of Manchak’s

amendment).

Manchak argues that the term should be construed

according to its ordinary meaning, because it is not explicitly

defined in the specification of the ’003 patent or its

prosecution history.

As stated above, it is established that a patent’s preferred

embodiment should not be read to limit the scope of the

patent’s claims. See Laitram Corp. v. Cambridge Wire Cloth

Co., 863 F.2d 855, 865 (Fed. Cir. 1988), cert. denied, 490

U.S. 1068 (1989). Accordingly, even though the preferred

embodiment and the patent’s abstract specify a minimum

PH of 12.4, the court will not adopt Sevenson’s construction

because it runs counter to the clear language of claim 1(b).

And, as is also stated above, the court finds that it is not

appropriate for Sevenson to raise a new matter defense in

the claim construction context. See Intervet Am. v. Kee-Vat

Labs., Inc., 887 F.2d 1050, 1053 (Fed. Cir. 1989).

Consequently, the court will construe the phrase “pH of

at least 12” to mean “pH of at least 12.”

44a

Appendix B

f. The construction of the phrase “bacteria

and virus initially present in said sludge are

deactivated”

The phrase “bacteria and virus initially present in said

sludge are deactivated” appears in claim 1(b) of the ’003

patent and is a required element within the second step of

the seven-step sludge treatment process taught by claim 1.

As it argued with respect to the term “pH of at least 12,”

Sevenson argues that the term “deactivated” must be read as

“destroyed” because the term “deactivated” does not appear

in the patent’s specification or prosecution history. It notes,

however, that the term “destroyed” appears in the

specification. See, e.g., col. 1, lines 43-49. Sevenson also

argues that there is no basis in Manchak’s June 1, 1976

continuation-in-part application for claiming that the bacteria

in the virus in the sludge are “deactivated.” As with its

argument with respect to the phrase “pH of at least 12,”

Sevenson argues that the term “deactivated” is impermissible

new matter, because it first appeared in Manchak’s March

1, 1977 amendment.

For the reasons stated above with respect to the court’s

construction of the term “pH of at least 12,” the court will

not adopt Sevenson’s proposed construction. And because

the term “deactivated” is not explicitly defined in the

specification or prosecution history of the ’003 patent, the

court will construe the term according to its ordinary

meaning.

Webster's Third New International Dictionary 59 (1986)

defines the verb “deactivate” as follows: “to make inactive

45a

Appendix B

or ineffective.” Consequently, the court will adopt the

following construction of the phrase “bacteria and virus

initially present in said sludge are deactivated”:

Bacteria and virus initially present in said sludge

are made inactive or ineffective.

g. The construction of the phrases “elongate

confined space” and “withdrawing said

Steam from said confined space”

The phrase “elongate confined space” appears in claim

1(c) of the 003 patent and is the third step of the seven-step

sludge treatment process taught by claim 1. The phrase

“withdrawing said steam from said confined space” appears

in claim 1(f) of the ’003 patent and is the sixth step of the

seven-step sludge treatment process taught by claim 1.

The parties do not dispute the construction of the terms

“elongate,” “space,” and “steam.” They do, however, dispute

the meaning of the terms “confined” and “withdrawing.”

Sevenson argues that “confined” should be construed

SO as to require that the apparatus embodied in claim 1 of

the ’003 patent must contain steam produced by the reaction

between calcium oxide and water in the sludge that occurs

within the elongate confined space. In essence, Sevenson

argues that the apparatus must have a top or some other

structure that will prevent the steam from escaping from the

elongate confined space into the ambient environment. In

support of its construction, Sevenson cites to references to

the phrase “elongate confined space” in the specification of

46a

Appendix B

the '003 patent (see, e.g., col. 8, lines 20-22); and testimony

from Dr. Christensen that he reads claim | of the '003 patent

to require some type of top.

As for the term “withdrawing,” Sevenson argues that

this term should be construed so as to require that steam

must be actively removed from the elongate confined space

— rather than being allowed to escape passively into the

ambient environment. In support of its construction,

Sevenson cites to a reference to steam in the embodiment

depicted by Figure 14 of the °003 patent (see col. 8, lines

61-64) and testimony from Dr. Christensen that he considers

the word “withdraw” to connote an active means of

withdrawing steam.

Conversely, Manchak argues that claim | of the '003

patent does not contain any limitation requiring that steam

be confined within the elongate confined space. He argues

that because claims 5, 6, and 7 of the "003 patent all teach

processes in which steam must be confined within an

apparatus before subsequently being released into the

ambient environment, claim | must, according to the doctrine

of claim differentiation, be read so as to have it claim

inventions different from those claimed in claims 5, 6, and

7. Manchak also argues that allowing steam to accumulate

within the elongate confined space would defeat the purpose

of the claimed invention, as it could potentially create

dangerous conditions resulting from the pressurized

conditions in the elongate confined space. Dr. Neufeld

testified on direct examination that the accumulation of steam

in such a confined space could be dangerous.

47a

Appendix B

As for his proposed construction of “withdrawing,”

Manchak argues that claim 1 does not require that the steam

be actively removed from the elongate confined space.

Noting that claim 6 reads on a process in which steam is

actively withdrawn from the apparatus, he again cites to the

doctrine of claim differentiation. He argues, therefore, that

construing claim 1 to require an active means of steam

withdrawal would make claim 6 impermissibly redundant.

For additional support for his proposed construction,

Manchak cites to testimony from Dr. Neufeld that confining

steam in the elongate confined space would prevent the

formation of a dry reaction product.

Sevenson responds to Manchak’s claim differentiation

analysis by arguing that claim 5 claims an invention that

allows a greater quantity of steam to accumulate (through

the increased depth of its “longitudinally extending space”)

than does claim 1. Accordingly, it argues, claims 1 and 5

can be construed so as to embody different inventions. It is

unclear as to the basis of Sevenson’s argument.

At the outset, the court notes that it will not consider

Sevenson’s cites to descriptions of the embodiment depicted

in Figure 14 of the 003 patent as support for Sevenson’s

proposed construction of the terms “confined” and

“withdrawing.” See, e.g., col. 8, lines 61-64. Drawing on

the plain language of the specification, the court finds that

Figure 14 depicts an apparatus embodied by claims 1, 5, 6,

7, and 9 of the 003 patent. That is, Figure 14 embodies the

seven-step process claimed in claim 1, and adds the

additional steps of allowing steam to accumulate (claim 5),

blowing the steam outside of the area in which it is allowed

48a

Appendix B

to accumulate (claim 6), treating the steam with water (claim

7), and filtering the steam before it is actively discharged

into the ambient environment (claim 9). Accordingly,

because the embodiment depicted in Figure 14 teaches an

invention with more limitations than are taught by claim 1,

any citations by Sevenson to descriptions of the embodiment

depicted in Figure 14 as support for its proposed construction

of the terms “confined” and “withdrawing” are contrary to

the principle that a patent’s preferred embodiment should

not be construed so as to limit the scope of the patent’s

claims.

The doctrine of claim differentiation states that “* ‘claims

should be presumed to cover different inventions.’ ” Laitram

Corp. v. Rexnord, Inc., 939 F.2d 1533, 1538 (Fed. Cir. 1991)

(quoting Autogiro Co. of Am. v. United States, 384 F.2d 391,

404 (Ct. Cl. 1967)). Claim differentiation also embodies the

principle that the narrow limitations of one claim should not

be read into a broader, more general claim. D.M.J. Inc. v.

Deere & Co., 755 F.2d 1570, 1574 (Fed. Cir. 1985).

In this case, Sevenson’s argument that claim 1(c) of the

003 patent should be construed so as to require a means by

which steam can accumulate does not comport with the

doctrine of claim differentiation. In essence, Sevenson seeks

to read a limitation of claim 5 — the accumulation of steam

within a “longitudinally extending confined space” — into

the general language of claim 1, which does not read in any

way on a process for allowing steam to accumulate in the

elongate space. And because claim | does not read on any

process that allows steam to accumulate, Sevenson’s

argument that claim 5 simply allows for a larger space for

49a

Appendix B

steam accumulation than the inventions claimed by claim 1

does not comport with the doctrine of claim differentiation.

Accordingly, the court will construe the phrase “elongate

confined space” as follows:

An elongate space that must confine the reaction

product of calcium oxide and sludge. However,

steam produced as the result of the reaction

between calcium oxide and water in the sludge

need not be so confined. .

Additionally, the court agrees with Manchak’s argument

that the canon of claim differentiation precludes reading

claim 1(f) to require that steam must be actively “withdrawn”

from the elongate confined space. Claim 5 adds onto the

seven-step process taught by claim | by providing for a

“longitudinally extending space . .. into which said steam

can accumulate... .” And claim 6 of the ’003 patent adds a

ninth step to claim 5. The ninth step, step (h), reads as

follows:

[B]lowing a stream of air across said passage and

substantially normal thereto to withdraw said

steam from said longitudinally extending space.

So Sevenson’s argument that the phrase “withdrawing steam”

should be construed to require an active means of removing

steam from the elongate confined space would impermissibly

narrow the scope of claim 1 by reading in claim 6’s active-

withdrawal-of-steam limitation into claim 1.

Accordingly, the court will construe the phrase

“withdrawing said steam from said confined space” as

follows:

50a

Appendix B

Removing, either by active or passive means,

steam from the elongate confined space.

h. The construction of the phrase “major

portion of said sludge is of marine origin”

The final construction that the court must undertake is

the phrase “major portion of said sludge is of marine origin,”

which appears in dependent claim 13. Claim 13 reads: “The

method as defined in claim | in which the major portion of

said sludge is of marine origin.”

Sevenson argues that the term should be construed to

require that more than 50 percent of the sludge by weight

originates in salt water. It apparently relies on the term’s

ordinary meaning as support for its construction. Manchak

argues that the phrase should be construed according to its

ordinary meaning, because it is not otherwise defined in the

‘003 patent or its prosecution history.

The court finds that because the terms “‘major portion”

and “marine” are not specifically defined in the specification

and prosecution history of the °003 patent, the court will

construe the terms according to their ordinary meaning.

Webster's Third New International Dictionary, 1382

(1986) defines “marine” as of or relating to the sea.” The

word “sea” is defined as “the oceans of the world with their

dependent saline waters.” /d. at 2045. The word “major” is

defined as “greater in number, quantity, or extent.” Jd. at

1363. Accordingly, given the ordinary meanings of these

terms, the court will adopt most of Sevemson’s proposed

Sla

Appendix B

construction. The court’s construction of the phrase “major

portion of said sludge is of marine origin” is as follows:

More than 50 percent of the said sludge by weight

is taken from the ocean or its dependent saline

waters.

IV. Conclusion

Having construed the genuinely disputed terms in claims

1 and 13 of U.S. Patent No. 4,079,003 in the manner set

forth above, should this case proceed to trial, the court will

instruct the jury in accordance with this memorandum

opinion.

52a

APPENDIX C — ORDER OF THE UNITED STATES

COURT OF APPEALS FOR THE FEDERAL CIRCUIT

DENYING PETITION FOR REHEARING DATED

AND FILED FEBRUARY 8, 2000

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

98-1530

FRANK MANCHAK, JR.,

Plaintiff-Appellee,

CHEMICAL WASTE MANAGEMENT, INC., RUST

REMEDIAL SERVICES, INC., WHEELABRATOR

ENVIRONMENTAL SYSTEMS, INC., and LAIDLAW

ENVIRONMENTAL SERVICES, INC.,

Defendants,

and

SEVENSON ENVIRONMENTAL SERVICES, INC.,

Defendant-Appellant.

ORDER

A combined petition for rehearing and petition for

rehearing en banc having been filed by the APPELLEE, and

a response thereto having been invited by the court and filed

53a

Appendix C

by the APPELLANT, and the petition for rehearing having

been referred to the panel that heard the appeal, and thereafter

the petition for rehearing en banc and response having been

referred to the circuit judges who are in regular active service,

UPON CONSIDERATION THEREOF, it is

ORDERED that the petition for rehearing be, and the

same hereby is, DENIED and it is further

ORDERED that the petition for rehearing en banc be,

and the same hereby is, DECLINED.

The mandate of the court will issue on February 15, 2000.

FOR THE COURT,

s/ Jan Horbaly (AV)

Jan Horbaly

Clerk

Dated: February 8, 2000

54a

APPENDIX D — CONSTITUTIONAL PROVISION

AND RULE INVOLVED

U.S. Const., art. I, § 8, cl. 8

To promote the Progress of Science and useful Arts, by

securing for limited Times to Authors and Inventors the

exclusive Right to their respective Writings and Discoveries;

* * ok

Fed. R. Civ. P. 52(a)

Rule 52. Findings by the Court; Judgment on Partial

Findings

(a) Effect. In all actions tried upon the facts without a

jury or with an advisory jury, the court shall find the facts

specially and state separately its conclusions of law thereon,

and judgment shall be entered pursuant to Rule 58; and in

granting or refusing interlocutory injunctions the court shall

similarly set forth the findings of fact and conclusions of

law which constitute the grounds of its action. Requests for

findings are not necessary for purposes of review. Findings

of fact, whether based on oral or documentary evidence, shall

not be set aside unless clearly erroneous, and due regard shall

be given to the opportunity of the trial court to judge of the

credibility of the witnesses. The findings of a master, to the

extent that the court adopts them, shall be considered as the

findings of the court. It will be sufficient if the findings of

fact and-conclusions of law are stated orally and recorded in

open court following the close of the evidence or appear in

an opinion or memorandum of decision filed by the court.

Findings of fact and conclusions of law are unnecessary on

decisions of motions under Rule 12 or 56 or any other motion

except as provided in subdivision (c) of this rule.

* * * *

55a

APPENDIX E — U.S. PATENT NO. 4,028,240

DATED JUNE 7, 1977

[Omitted here but submitted separately

as Lodging Appendix]

56a

APPENDIX F — U.S. PATENT NO. 4,079,003

DATED MARCH 14, 1978

{Omitted here but submitted separately

as Lodging Appendix]

57a

APPENDIX G — ARTICLE FROM AMERICAN BAR

ASSOCIATION, THE FEDERAL CIRCUIT’S DE NOVO

REVIEW OF PATENT CLAIM CONSTRUCTION: A NEED

FUR A MORE BALANCED APPROACH, FALL 1999

[Omitted here but submitted separately

as Lodging Appendix]

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.