# Petition for Writ of Certiorari — SMC Corp. v. Norgren, Inc. (No. 09-412)

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URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386017_1082%3A1

## Record

- **Collection:** Supreme Court brief
- **Document type:** Petition for Writ of Certiorari
- **Published:** January 1, 2009

## Text

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No. 09-412 001 6- Older-style connectors are still manufactured by SMC. See
Kuchta Tr. 532. They are not, however, the subject of Norgren’s
case. See, e.g., Norgren Br. at 21; Wiskamp Tr. 331.

“The scope of any exclusion order that should issue as a result
of this investigation, including the possible exclusion of
downstream products, shall be discussed in the Recommended
Determination on remedy to issue pursuant to 19 C.F.R. §
210.42(a)(1)(ii).

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(1) SMC’s “new style” connectors with at
least the following model numbers (Y100,
Y100T, Y200, Y200T, Y300, Y300T, Y400,
Y400T, Y500, Y500T, Y600 and Y600T),
and which may be exemplified by the SMC
Y400;

(2) SMC FRLs; and

(3) “Additional Downstream Products,”
identified as lelvery larger pneumatic
system that incorporates the SMC
connector and FRLs.”

Norgren Br. at 21-23.

There is no dispute that for the purposes of this
investigation, the “new style” SMC connectors do not
differ materially from each other. See, e.g., Norgren
Br. at 21 (illustrating an SMC Y400 as representative
of the accused connectors); Staff Br. at 26 & n.7
(referring to the SMC Y400 as representative, and
noting the similarity of the SMC connectors, except
for the Y100 which has only “a slightly different
configuration for the sealing means”).

Il. IMPORTATION OR SALE

The importation or sale requirement of section
337 has not been contested. Thus, it is found that
SMC sells for importation, imports and, or, sells after
importation articles accused in this investigation.
The importation or sale requirement of section 337 is
satisfied.

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Indeed, the record evidence shows that SMC
manufactures the accused connectors and FRLs in
Japan and China, and then imports them into the
United States by selling them to its United States
subsidiary. Although occasionally SCM attaches
connectors to FRLs prior to importation, SMC usually
brings the components into the United States in their
individual state. Thereafter, combinations of FRLs
and connectors are usually made in this country by
SMC, distributors or customers. Kuchta Tr. 536;
Pusateri Tr. 551, 554-556.

In addition, Norgren cites an admission by SMC
that other companies not named as respondents (/.e.,
Nippei Toyama Corp., Makino Milling Machine Co.,
Ltd., Mitsui Seiki Kogyo Co., Ltd., Tsugami Corp.,
Okuma Corp., Yamazaki Mazak Corp., Mori Seki Co.,
Ltd., and Fanuc Ltd.) may ship both its older version
connectors, and its newer (accused) version
connectors into the United States either alone, or as
part of a “larger product.” The details of those
products are not specified in the record. See CX-
143 (Interrog. Responses), SMC Resp. No. 31;
Kuchta Tr. 534 535.5

* Norgren relies on no evidence other than that cited above, and
the fact that no contrary evidence was presented during the
hearing. See Norgren Br. at 3, 53: see also CPFF 12.3 (“SMC's
FRLs are present in larger OEM (Original Equipment
Manufacturer) equipment. Kuchta Tr. 534-535”); Kuchta Tr.
534-535 (In this context, “a larger machine that contains some
series of FRL components” is “any industrial automated
machine that uses compressed air.”).

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Ill. CLAIM CONSTRUCTION

This investigation is based on Norgren’s
allegation that certain products manufactured and,
or, sold by SMC infringe one or more specified claims
of Norgren’s United States Patent No. 5,372,392. See
JX-1. The claims of the patent are subject to
numerous corrections contained in the Certificate of
Correction (dated Dec. 13, 1994 and issued Apr. 11,
1995), included in JX-1. A copy of the patent’s
prosecution history is marked as JX-2.

A. Applicable Law

Pursuant to the Commission’s notice of
investigation, this is a patent-based investigation.
See 71 Fed. Reg. 66193 (2006). Accordingly, all of the
unfair acts alleged by Norgren to have occurred are
instances of alleged infringement of the ‘392 patent.
Any finding of infringement or non-infringement
requires a two-step analytical approach. First, the
asserted patent claims must be construed as a matter
of law to determine their proper scope.* Second, a
factual determination must be made as to whether
the properly construed claims read on the accused
devices. See Markman v. Westview Instruments,
Inc., 52 F.3d 967, 976 (Fed. Cir. 1995)(en banc), affd,
517 U.S. 370 (1996).

6 Only those claim terms that are in controversy need to be
construed, and only to the extent necessary to resolve the
controversy. Vanderlande Indus. Nederland BV v. Intl Trade
Comm., 366 F.3d 1311, 1323 (Fed. Cir. 2004); Vivid Tech., Inc. v.
American Sci. & Engg, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).

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Claim construction begins with the language of
the claims themselves. Claims should be given their
ordinary and customary meaning as understood by a
person of ordinary skill in the art, viewing the claim
terms in the context of the entire patent. Phillips v.
AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005),
cert. denied, 546 U.S. 1170 (2006). With respect to
claim preambles, the Court of Appeals for the Federal
Circuit has explained that:

[A] claim preamble has the import that the
claim as a whole suggests for it. In other
words, when the claim drafter chooses to
use both the preamble and the body to
define the subject matter of the claimed
invention, the invention so defined, and
not some other, is the one the patent
protects.

Eaton Corp. v. Rockwell Int'l Corp., 323 F.3d 1332,
1339 (Fed. Cir. 2003) (quoting Bel] Communications
Research, Inc. v. Vitalink Communications Corp., 55
F.3d 615, 620 (Fed. Cir. 1995)).

In some instances, claim terms do not have
particular meaning in a field of art, and claim
construction involves little more than the application
of the widely accepted meaning of commonly
understood words. Phillips, 415 F.3d at 1314. In
such circumstances, general purpose dictionaries
may be helpful. In many cases, claim terms have a
specialized meaning, and it is necessary to determine
what a person of skill in the art would have
understood disputed claim language to mean, by
analyzing the words of the claims themselves, the

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remainder of the specification, the prosecution
history, and extrinsic evidence concerning relevant
scientific principles, as well as the meaning of
technical terms, and the state of the art. Jd. (quoting
Innova/Pure Water, Inc. v. Safari Water Filtration
Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004)).

In cases in which the meaning of a claim term is
uncertain, the specification usually is the best guide
to the meaning of the term. /d. at 1815. As a general
rule, the particular examples or embodiments
discussed in the specification are not to be read into
the claims as limitations. Markman, 52 F.3d at 979.
However, the specification is always highly relevant
to the claim construction analysis. The specification
is usually dispositive. It is the single best guide to
the meaning of a disputed term. Phillips, 415 F.3d at
1315. Moreover; “[t]he construction that stays true to
the claim language and most naturally aligns with
the patent’s description of the invention will be, in
the end, the correct construction.” Jd. at 1316.

If the intrinsic evidence does not establish the
meaning of a claim, then extrinsic evidence may be
considered. Extrinsic evidence consists of all
evidence external to the patent and the prosecution
history, including inventor testimony, expert
testimony and learned treatises. Id. at 1317.
Inventor testimony can be useful to shed light on the
relevant art. In evaluating expert testimony, a court
should discount any expert testimony that is clearly
at odds with the claim construction mandated by the
claims themselves, the written description, and the
prosecution history, in other words, with the written
record of the patent. /d. at 1318. Extrinsic evidence

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may be considered if a court deems it helpful in
determining the true meaning of language used in
the patent claims. /d.

B. The ‘392 Patent

The ‘392 patent, which is entitled “Connecting
Devices,” issuec to Myron Dunn, Kevin T. Dickson,
and Urs T. Moeker on December 13, 1994, based on
an application filed on June 24, 19938. JX-1; JX-2.
None of the listed inventors was called as a witness
during the hearing.

As described in the ‘392 patent specification, the
field of the claimed invention “relates to devices for
connecting together fluid flow elements, especially
but not exclusively fluid-conditioning units, such as,
for example, pressure regulators, filters and
lubricators for use in compressed air systems.” JX-1,
col. 1, ll. 6-10. With respect to the prior art, the
patent explains:

As is well-known, a compressed air pipeline
usually includes, intermediate the air
compressor and a point of use, a plurality of
conditioning units through which the
compressed air sequentially passes.
Depending on the circumstances, there will
usually be two or more such_ units
positioned adjacent to one another. For
example, a typical arrangement might
comprise a bank of three units, namely a
filter, regulator and lubricator. In any
event, it is known to provide “modular”
units, and means for connecting them,

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whereby any number of units, as desired,
may be readily connected together and into
the compressed air pipeline so that the air
will pass though them in the desired
sequence, for example through a filter,
pressure regulator and lubricator, in that
order. Several connecting means have over

— the years been developed and
commercialized but, whilst technically
satisfactory, many have been relatively
expensive to produce and/or have consisted
of loose parts that have to be assembled by
the user, some of which are susceptible to
being lost.

Id., col. 1, ll. 12-31. Thus, the patent states, it “is an
object of the present invention to provide a simple,
relatively inexpensive, preferably unitary connecting
means for sealingly connecting together fluid flow
elements which permits ready disconnection of the
elements when desired.” Jd, col. 1, Ill. 32-36
(Background of the Invention).

To summarize the claimed invention, the
specification states:

In its broadest aspect, the present invention
provides connecting means for contiguously
connecting together a pair of fluid-flow
elements, said means comprising a four-
sided, generally rectangular clamp adapted,
in its operative clamping position, to
engage, in parallel relationship with one
another, a pair of ported flanges associated
respectively with said elements and further

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comprising sealing means for establishing
fluid-tight communication between the
respective ports formed in said flanges, one
of said sides of the clamp being pivotally
mounted so that said one side can be
pivoted out of said operative clamping
position in order to permit reception of said
flanges into the clamp and then pivoted
back into said operative clamping position,
and locking means to lock said one side in
said operative clamping position.

In a preferred embodiment, the sealing
means comprises a rectangular, plate-like
spacer having a fluid flow bore extending
through it between its two major faces, the
bore being about the same diameter as the
ports in said flanges, and the spacer is
located centrally within the _ generally
rectangular clamp by, for example, one or
more screws or rivets. Each major face of
the spacer has a_= sealing’ surface
circumscribing the opposite extremities of
the bore and each sealing surface may
support, for example in an annular groove,
an O-ring seal. In such preferred
embodiment, the locking means preferably
comprises a screw or bolt held captive by
the pivotally mounted side of the clamp and
which can be screwed to tightness into a
threaded bore formed in the spacer or in an
adjacent side of the clamp. Preferably, the
said one side of the clamp is pivotally
mounted on the spacer or on an adjacent

29a

side of the clamp by means of a hinge-like
mounting.

Accordingly, it will be appreciated that the
connecting means of the invention may be a
unitary structure in the sense that it has no
loose parts that might otherwise get lost by
the user.

Td. col. 1, 1. 39 through col. 2, 1. 8 (“Summary of the
Invention”).

Various aspects of the preferred embodiments
are illustrated in the ‘392 patent specification,
including Figure 1 and Figure 2, reproduced below.
Figure 1 is described as “a perspective view, in
exploded form, of a connecting means constructed in
accordance with the invention.” Figure 2 is “a cross-
section on the line II - II of Fig. 1.” JX-1, col. 2, ll. 14-
17. While this illustration does not depict the entire
scope of the patent claims, it is helpful in
understanding the nature of the connecting devices
covered by the patent.

30a

Similarly, one may obtain a visual representation
of how the preferred embodiment of the claimed
connecting device might connect a compressed air
filter unit and a compressed air lubricator unit by
referring to the specification’s Figure 3, which is
reproduced below, in which diagram 22 represents an
air filter unit, and diagram 23 represents an air
lubricator unit. See JX-1, col. 2, ll. 18-21, col. 3, ll.
21-24.

C. One of Ordin Skill in the Relevant Art

As discussed in the background and summary
portions of the specification (quoted above), the
subject matter of the ‘392 patent encompasses the
engineering of a mechanical device, as well as its
practical and common application in the compressed
air industry in 19938.

3la

With respect to the question of one of ordinary
skill in the art relevant to the claims of the ‘392
patent, Norgren discounts the need for a bachelor’s
degree. Rather, it submits that “lolnly a person with
a deep understanding of the FRL industry at the time
of the invention would know what these claim terms
meant in that industry and only such a person would
have the proper perspective to know what would have
been obvious to engineers designing devices for the
industry at the time.” Norgren Br. at 8. (Norgren
apparently is referring to its non-degreed expert,
John Wiskamp. See Tr. 209-210.) Norgren further
submits, “Of much greater importance is experience
in the FRL and pneumatics industry at the time. of
the invention allowing one to understand the market
demands, product performance and _ design
requirements.” Jd.

Accordingly, Norgren proposes that a person of
ordinary skill in the art relevant to the ‘392 patent is
“a person with several years of experience in the
pneumatics and air preparation (FRL) fields, with
specific experience in the design and development of
commonly used FRL product lines such as the
Excelon and Quik Clamp products lines.” Norgren
Br. at 8.’

SMC argues that a “person of ordinary skill in
the art to which the ‘392 patent is directed would
have a bachelors degree in engineering and two to

” Excelon and Quik Clamp are Norgren products that were
developed in the early 1990s. Wiskamp Tr. 224-225; Robertson
Tr. 44-47. In fact, the Quik Clamp (interchangeably referred to
as a Quick-Clamp) is the connecting device that is the subject of
the ‘392 patent at issue in this investigation.

32a

four years of industry experience.” SMC Br. at 12.
(SMC apparently is referring to the
accomplishments of its own expert, Dr. David
Trumper. See Tr. 596-598.)

The Staff believes that both Norgren and SMC
are partly correct. Staff submits that one of ordinary
skill in the art “should have either (1) several years of
experience in the FRL industry (essentially Norgren’s
position) or (2) an engineering degree with two years
of industry experience (essentially SMC’s position).”
Staff Reply Br. at 1-2 n.1.8

In determining the level of ordinary skill here,
Staff points out that the person who designed the
accused SMC connectors holds an engineering degree,
while the inventors listed on the ‘392 patent, who
concurrently designed Norgren’s Quik Clamp
product, include both engineers and non-engineers.
Staff also bases its analysis on Norgren’s admission
during the pre-hearing phase of this investigation
that the technology at issue is “simple.” Jd.

The record in this investigation, including the
specification of the ‘392 patent, shows that one of
ordinary skill in the art relevant to the ‘392 patent
would have a thorough understanding of how FRLs
are connected in a compressed air pipeline, and would

* Staff submits that in determining the level of skill in the art, a
court looks at six factors: “(1) the educational level of the
inventor; (2) type of problems encountered in the art; (3) prior
art solutions to those problems; (4) rapidity with which
innovations are made; (5) sophistication of the technology: and
(6) educational level of active workers in the field.
Environmental Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696
(Fed. Cir, 1983).” Staff Reply Br. at 1 n.1.

33a

understand engineering concepts sufficiently to
design a workable connector for such FRLs. The
evidence shows that in 1993, one could have acquired
such ordinary skill through education, practical
industry experience, or both. See Wiskamp Tr. 216-
220, 224-225, 750-752; ‘Trumper' Tr. 600.
Consequently, one of ordinary skill in the relevant art
in 1993 would have had several years of industry
experience working with FRLs and connectors, or
would have had an engineering degree with two years
of industry experience.

D. The Di lai d ir
Proper Construction

Norgren asserts claims 1, 2, 3, 4,5, 7and 9 ofthe |.
‘392 patent against SMC in this investigation. See
Norgren Br. at 23-38. Claim 1 is the only
independent claim of the patent. See JX-1, col. 4, 1.
44 through col. 6, 1. 21 (all nine claims of the ‘392
patent). In its corrected form, claim 1 provides as
follows:

1. Connecting structure for contiguously
connecting together a pair of fluid-flow
elements, each fluid flow’ element
including a generally rectangular ported
flange so as to define a pair of ported
flanges associated with the fluid-flow
elements, said connecting _— structure
comprising:

a four-sided, generally rectangular clamp
adapted, in its operative clamping position,
to engage, in parallel relationship with one

34a

another, the pair of ported flanges, one of
said sides of the clamp being pivotally
mounted so that said one side can be
pivoted out of said operative clamping
position in order to permit reception of
said flanges into the clamp and then
pivoted back into said operative clamping
position,

sealing means for establishing fluid-tight
communication between the _ respective
ports formed in said flanges, and

locking means for releasably locking said
one side in said operative clamping
position, in which position the clamp urges
the flanges towards one another thereby
establishing together with said sealing
means, said fluid-tight communication
between said ports.

JX-1, col. 4, ll. 44-66 (ee Certificate of Correction).

The parties’ proposed claim constructions differ
from one another, and their different interpretations
of the claimed invention affect numerous portions of
the asserted claims. Nevertheless, upon consideration
of all the parties’ post-hearing filings, including their
reply briefs, it is evident that the _ relevant
infringement, validity and domestic industry issucs
in this investigation turn upon the _ proper
construction of the following claim terms or
limitations, cach of which is found in claim 1, w7z., (1)
“a generally rectangular ported flange,” (2) “a four-
sided generally rectangular clamp adapted, in its

35a

operative clamping position, to engage, in parallel
relationship with one another, the pair of ported
flanges” and (3) “pivotally mounted.” See, eg,
Norgren Br. at 9; SMC Reply Br. at 1-9; Staff Br. at
1-4. Each of these limitations is discussed in
separate sections below.

1. “a generally rectangular ported flange”

As quoted above, the preamble of claim 1 refers
to “a generally rectangular ported flange.” Norgren
argues that because the term “appears in the
preamble of the claim and does not breathe life and
meaning into the claim .. . [the] FRLs and the
corresponding flanges on their sides are not per se
limitations of claim 1-8.” Norgren Br. at 6, 9
(paraphrasing Pitney Bowes, Inc. v. Hewlett-Packard
Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)).
Nevertheless, Norgren concedes that the term must
be construed in order to understand other portions of
the claims which undisputably do recite limitations
on the claimed invention, such as the subsequently
required “clamp” that engages the flanges of an FRL.
Norgren Br. at 9-10.

Norgren argues that during the hearing its
expert, John Wiskamp, testified that a flange was a
“connection device,” and further that “a person of
ordinary skill in the art circa 1993 would understand
flange to be any general connection feature used to
join two faces together.” Norgren Br. at 13 (citing
Wiskamp Tr. 260-261, 455 (emphasis in original);
CPFF 7.2 and 7.2.1).9 Thus, Norgren proposes the

* It is evident that Norgren relies on its expert’s testimony to
argue that a flange is a structure greater in scope than the

36a

following construction for “a generally rectangular
ported flange”:

A rectangular or close to rectangular
attachment feature that allows’ the
connector to engage and/or align two FRLs
in parallel relationship with each other
such that a fluid tight seal is maintained
between the respective ports on the FRLs.

Td. at 13.

As seen in Norgren’s proposed construction, as
well as in portions of the claim preamble, the claimed
connector engages the flanges of two separate FLRs
so as to align them in parallel. It is not disputed that
the claimed connector must accommodate a “port” or
hole that allows fluid (such as compressed and
treated air which is often called a “fluid” in the art) to
flow from one FLR to another after the FLRs have
been aligned. Nor is it disputed by any party that the
alignment and creation of a fluid-tight seal is
performed by means of a clamp that is expressly
required by the body of the claim (and which is
discussed in detail below). Consequently, Norgren
expressly admits that the “rectangular attachment
feature,” which it identifies as a “flange,” “Includes
sufficient projecting rims for the clamp to function, it

projecting rims. However, Norgren’s argument that a flange is
separate from the claimed connecting device (an argument with
which this Tribunal happens to concur) is not advanced by its
own expert’s testimony which, as summarized in Norgren’s brief
and also quoted supra, was to the effect that a flange is in fact a
“connection device.” See Norgren Br. at 13.

37a

is rectangular, and it has a port.” Norgren Br. at 15
(emphasis added).

Norgren does not admit that the projecting rims
themselves constitute a flange or flanges. Rather,
Norgren argues that to equate the projecting rims
with the flanges recited in the preamble of the claim
would require an improper reliance on excerpts from
the specification’s description of the preferred
embodiment, would contradict statements made on
behalf of the applicants during prosecution, and
would be contrary to admissions made by SMC’s
expert (Dr. Trumper) during the hearing. Jd.

It further argues that equating the projecting
rims of the flange with the flange itself would make
little sense when one considers the devices at issue
and the function they are designed to accomplish. In
particular, complainant asserts:

It would make no sense that the rims
themselves are either rectangular or
ported as it would serve no purpose in the
claimed invention or in any of the
embodiments disclosed within the patent.
If the flanges are rims or edges as SMC
argues, they would not have holes or ports
in them as needed to accomplish the
invention claimed in the patent.

Norgren Br. at 15.

Norgren’s brief contains a depiction of a device
that allegedly exhibits “a generally rectangular
ported flange,” according to its proposed construction.
In that regard, Norgren argues that during the

38a

hearing, SMC’s expert witness (Dr. Trumper)
referred to a portion of a prior art device depicted in
RX-20 (the patent to “Ribble”) as containing such a
flange. According to Norgren, Dr. Trumper testified
that the so-called flange was not restricted to the
projecting rims themselves (called “wedges” in
Ribble), and that the flange in question had only two
projecting rims (or “wedges”), not four. Norgren Br.
at 13-14. (As discussed, infra, SMC takes issue with
Norgren’s’ characterization of Dr. Trumper’s
testimony.)

The Figure at right
from the Ribble
specification (and
Norgren’s brief),
highlighted by Norgren
to exemplify “a generally
rectangular ported
flange,” is illustrative of
complainant’s argument.
See Norgren Br. at 14.

Norgren states that the reason SMC’s expert
“could testity that such a structure is a flange —
indeed a generally rectangular ported flange — is
because that structure is just that: generally
rectangular, ported, and an attachment feature that
allowls] the connector to engage and/or align two
FRLs.” Jd. Indeed, Norgren argues, that inasmuch
as patent claims are not bound by the preferred
embodiments of the specification, “the generally
rectangular ported flanges that the clamp is adapted
to engage in the claims can not require the flanges to

39a

have any projecting rims, let alone four projecting
rims.” Jd. at 12 (emphasis in original). This
statement appears to conflict with another that is
also contained in Norgren’s brief, and which is quoted
above, to the effect that the flange must have
“sufficient projecting rims for the clamp to function.”
See Norgren Br. at 15.

In any event, it is clear Norgren argues that the
flange referred to in the preamble of claim 1 may
have either four projecting rims (as in a described in
the preferred embodiment) or two such rims (as
illustrated in the prior art Ribble patent), and
possibly Norgren may be arguing that the flange
could have no projecting rims at all. In this
investigation, all prior art cited against the ‘392
patent has a rim or rims, or similar features; and all
accused devices, and all devices used to establish a
domestic industry have two or four projecting rims.
Thus, whether or not the flange on an FRL must have
two or four such rims is the salient issue to be
determined.

SMC argues that “a generally rectangular ported
flange’ should be construed to mean a flange of
rectangular shape with projections on all four sides
and a hole in the middle that is used as a port.” SMC
Br. at 13, 16.19 Thus, in contrast to Norgren’s
proposed construction, SMC would require rims

' SMC provides a representation of such a flange in RDX-1
(illustration on the left portion of the exhibit), which is
reproduced in its brief at page 27. RDX-1 also contains a
representation of part of an accused device (illustration on the
right), which is not relevant to the claim construction issue.

40a

projecting from all four sides of the flange. While
SMC’s proposed construction of this term is not as
broad as Norgren’s, it should be noted that contrary
to Norgren’s concerns about SMC’s_ proposed
construction, SMC does not limit its construction of
“flange” to projecting rims. Rather, SMC views the
rims as projecting from the larger flange structure.

SMC argues that the specification of the ‘392
patent does not impart any special meaning to the
claim term “a generally rectangular ported flange.”
Nevertheless, SMC also argues that one cannot
disregard the specification, and in this case, the
embodiments of the specification consistently depict
in figures, and describe in words, a_ generally
rectangular flange with rims projecting on all four
sides, as well as a four-sided clamp that receives the
rims projecting from all four sides of the flange. SMC
Br. at 13-14.

In addition, SMC submits that, as stated by its
expert, Dr. Trumper, one of ordinary skill would
understand a generally rectangular ported flange to
be rectangular with rims projecting on all four sides
with a hole in the middle. /d. at 14, citing Trumper
Tr. 601. In SMC’s view, such a claim construction
“stays true to the claim language, and most naturally
aligns with the patent’s description of the invention.”
Id. (citing Phillips, 415 F.3d at 1316; SafeTCare Mfg.
Co. v. Tele-Made, Inc., 497 F.3d 1262, 1269-70 (Fed.
Cir. 2007)(specification relied on to understand what
the patentee had claimed and disclaimed)).

SMC further submits that Norgren
mischaracterizes Dr. Trumper’s testimony regarding

4la

the prior art Ribble patent (RX-20). SMC argues that
Dr. Trumper did not testify that this prior art
discloses a generally rectangular ported flange as
described in the claim preamble. Rather, Dr.
Trumper testified that Ribble discloses a three-sided
clamp, and “li]f you wanted to add a flange projecting
rim on the top and bottom of Ribble and then add a
fourth side that hinges, all of those would be
standard mechanical design choices.” SMC Reply Br.
at 5 (quoting Trumper Tr. 621).1!

SMC also argues that its proposed claim
construction is consistent with arguments made on
behalf of applicants during patent prosecution in
which Norgren amended the claims to restrict each
fluid-flow element so as to include “a generally
rectangular ported flange.” Thus, it is asserted that
Norgren cannot now argue that the term, “a generally
rectangular ported flange”, covers flanges that are not

'' Dr. Trumper may have misspoken during the hearing, or if
not, perhaps SMC should have moved to correct the transcript.
However, the quotation, supra, from the hearing testimony of
Dr. Trumper accurately reflects the official transcript which
indicates that he said “top and bottom,” rather than “top or
bottom” as stated in SMC’s reply brief.

In any event, it is clear from the transcript that while Dr.
Trumper did refer to the Ribble embodiment as having a sort of
a flange, contrary to Norgren’s characterization of his
testimony, he did not say that Ribble disclosed a flange such as
that referred to in claim 1. More particularly, as part of the
same testimony on the issue of alleged obviousness, Dr.
Trumper explained how one would have to modify the Ribble
clamp in order for it to have a “four-sided generally rectangular
shape.” See Trumper Tr. 620-621.

42a

rectangular or are not ported. SMC Br. at 15 (citing
Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314,
1323-28 (Fed. Cir. 2003)(holding that claim cannot be
construed to encompass subject matter that patentee
disavowed during prosecution to obtain allowance)).
SMC further submits that its proposed claim
construction is consistent with the position taken by
Norgren in connection with the domestic industry
issue to the effect that Norgren’s own “Quik Clamp”
connector, which engages four projecting rims,
practices the patent. Jd.

Finally, SMC argues that one should ignore
Norgren’s position that “a generally rectangular
ported flange” is not a claim limitation due to its
placement in the claim preamble inasmuch as
reference to the flange occurs four times in the body.
of claim 1. Jd. at n.4. Thus, both Norgren and SMC
argue that the term “a generally rectangular ported
flange” must be construed, albeit for different
reasons.

The Staff proposes that a “generally rectangular
ported flange” should be construed as “a flange
having a rectangular or close to rectangular shape
with projections on all four sides with an opening in
the middle.” Staff Br. at 7.12 Although later portions

'? The term “middle” as used by SMC and the Staff has not been
placed in contention. No precise definition of the term is
proposed by any party. It appears to be at least tacitly agreed
by all parties that a port must be provided somewhere within
the space delineated by the outer edges of the flange, and by
necessity in such a location and in such dimensions so as to
accommodate the fluid (compressed air) flowing through the
predetermined openings in the FRLs.

43a

of the Staffs brief do refer to flanges as rims, see,
e.g., Staff Br. at 9, this definition identifies flanges as
comprising projections, as well as a surface that
provides an opening in the middle. The Staff bases
its proposed construction in large part on the fact
that all asserted claims require a_ four-sided,
generally rectangular clamp adapted to engage a pair
of the (generally rectangular ) flanges at issue. /d. at
7-8.

The Staff also argues that SMC has offered a
definition that is consistent with evidence intrinsic to
the patent, consistent with extrinsic evidence, and
consistent with evidence presented at the hearing.
Thus, the Staff states that it can concur with SMC’s
proposed claim construction of this term. /d. at 8-9.

In contrast, the Staff argues, Norgren has sought
to justify a tenuous infringement position by
attempting during the course of this investigation to
move away from a “projecting rim” construction of the
flange at issue in favor of an “amorphous and generic
definition” that “ignores the claim language of claim
1, disregards the ‘392 patent specification, and
moreover conflicts with the plain and ordinary
meaning of the term ‘flange.’ /d. at 8 (citing, inter
alia, Norgren’s Mot. for Partial Summ. Deter., Mot.
Dkt. No. 587-10 at 15 (in which Norgren’s expert
defined a “flange” as a “projecting rim to attach to
something else”)).

Based on the arguments of the parties, it is
evident that all agree that whether the claim term “a
generally rectangular ported flange” appears in the
preamble of claim 1 by way of explanation, or

44a

whether it is present in the preamble to add a
particular limitation to the claimed invention, it must
be construed because of the relationship between the
flange and the clamp, the latter of which is
indisputably a claim hmitation. Further, it must be
determined what the claim indicates by use of the
term “a generally rectangular flange” with particular
emphasis on defining the word “flange” which is in
dispute. Finally, it must be determined whether or
not the generally rectangular flange referred to in the
preamble must have four projecting rims.

For the reasons detailed below, it is determined
that the word “flange,” as used in the claims of the
‘392 patent, is the structure that is received into the
claimed clamp, and further that “a _ generally
rectangular ported flange” is a flange of rectangular
shape with projections on all four sides and a hole in
the middle that is used as a port.

We begin with the critical inquiry whether “a
generally rectangular ported flange” is a claim
limitation contained in the preamble of claim. This
inquiry is most clearly decided by referring again to
the text at issue, which by way of review, is as
follows:

Connecting structure for contiguously
connecting together a pair of fluid-flow
elements, each fluid flow element
including a generally rectangular ported
flange so as to define a pair of ported
flanges associated with the fluid-flow
elements, said connecting — structure
comprising...

45a
JX-1, col. 4, ll. 44-48 (emphasis added).

According to the plain language of the preamble,
a connecting structure is claimed, and required
elements or limitations of which are to follow in the
body of the claim. The preamble does, however, set
forth the context in which the claimed “connecting
structure” is to be used, which is the contiguous
connection of a pair of “fluid flow elements” (or FRLs)
having certain features. The features of each FLR
include “a generally rectangular ported flange” so
that when taken together, two FRLs present “a pair
of ported flanges.!° It is undisputed that language
found in the body of the claim, particularly the text
that recites a clamp adapted for use with the flanges
of the FRLs, refers back to this preamble language.
However, there is no indication in the plain language
of the claim that the flanges on the FRLs are
limitations placed on the claimed “connecting
structure.” In fact, as may be seen from the plain
language quoted above, the claimed connector is
actually described as a “connecting structure” that is
not the same as the “fluid flow elements” (7e., FRLs)
which bear the flanges.!4 It is clear that the

' A “pair” of flanges does not refer to the flanges located on
opposite sides of a single fluid flow element. Rather, when the
flange on one side of one unit is positioned next to the flange on
the side of a second unit, those two flanges located on two units
constitute “a pair” of flanges that are to be engaged by the
claimed connector.

'* An argument made by Norgren on behalf of the applicants
during prosecution of the ‘392 patent is not consistent with this
fact. Specifically, in order to overcome an _ indefiniteness
rejection of claims 1-8 before the U.S. Patent and Trademark

46a

“connecting structure” is the subject matter claimed
by claim 1, and not the FRLs or any of the FRL
features.

Inasmuch as limitations contained in the body of
the claim interact with the generally rectangular
ported flanges of the FRLs described in the preamble,
a question is raised as to the meaning of the term
“flange.” At the outset, it may be noted that two
possible issues stand resolved in the parties’ brief.

First, no party has confounded the rims that
project from a flange with the entirely of the flange
itself. In any event, Norgren correctly points out that
the claim refers to a “ported flange,” and it would
make no sense for the projecting rims to have a “port”
or hole through which compressed air could flow.'5
Clearly, the “ported flange” referred to in the claim
must pertain to a structure greater than projecting
rims to be engaged by the clamp.

Office, Norgren made the following argument to the effect that
fluid flow elements are not a part of the claimed combination:

The fluid flow elements and flanges defined in the
preamble of claim 1 are not part of the claimed
combination. The claimed combination provides a
clamp, sealing means and locking means for connecting
the fluid flow elements.

JX-2 (‘392 Prosecution History), May 25, 1994 Amendment, page
4 (emphasis added).

'S As seen in the summary of the parties’ arguments, supra,
there is no dispute that the flanges must be “ported,” or have a
hole, to allow the flow of fluid (most likely treated, compressed
air).

47a

Second, the parties do not disagree with respect
to the words, “generally rectangular.” All agree that
a precise definition of “rectangular” or “generally
rectangular” is not required by the claim and the art.
All also agree that the flange in question nee@. not be
perfectly rectangular, and proportions of the sides
need not be set forth with specificity.

Nevertheless, SMC and the Staff cannot agree
with Norgren on a proper definition of the term
“flange.” Norgren has, as already mentioned,
proposed more than one definition of the term
“flange” during the course of this investigation. Ina
motion for summary determination, Norgren argued
that a flange is a “projecting rim to attach to
something.” See Norgren’s Mot. for Partial Summ.
Deter., Mot. Dkt. No. 587-10 at 15. During the
hearing, Norgren’s expert, John Wiskamp, testified
that after consulting various dictionaries, he learned
that the word “flange” can have a number of
meanings, but testified that “the jargon for my
industry of flange would be the connection device,
that which allows a connection to be guided into a
connection and the connection to be completed.”
Wiskamp Tr. 442.

Norgren put forth no other evidence to support or
detail such a_ definition. Moreover, although
Wiskamp may have consulted dictionaries to learn
the various definitions of “flange,” he never consulted
the prosecution history of the ‘392 patent for any
purpose whatsoever, a significant short-coming. That
Norgren’s expert paid no attention whatsoever to the
prosecution history, and deemed it irrelevant to the
claim construction of the disputed terms, alleged

48a

infringement and patent validity, is demonstrated by
the following hearing testimony:

Q@. During your direct testimony, you went
through, you described to us what you had
done which led to your conclusion of
infringement, during this investigation that
you made. Did you review the prosecution
history of the ‘392 patent?

A. No, I did not.

Q. Do you know what a prosecution history
is?

A. Not necessarily.

Q. Did you have any concern that when you
were interpreting claim 1 and_ the
remainder of the claims that your
interpretation would be inconsistent with
the prosecution history?

A. No, I did not.
Wiskamp Tr. 428.

Mr. Wiskeamp’s failure to consider’ the
prosecution history means that although he may be a
technical expert who can provide factual and opinion
testimony concerning the compressed air and
pneumatics industry and FRL connections in general,
his testimony concerning the meaning of the patent
(not just the term “flange”) is clouded by the fact that
he surprisingly did not review all of the intrinsic
patent evidence. One can never know whether his
testimony would have changed if he had reviewed it.

49a

At this post-hearing stage, Norgren has finally
settled upon a definition that is, as correctly argued
by the Staff, “amorphous and generic.” Indeed,
Norgren now argues in its brief that to one of
ordinary skill in 1993, a “flange” was simply “any
general connection feature used to join two faces
together.” Similarly, “a generally rectangular
flange,” according to Norgren’s brief, is a “rectangular
or close to rectangular attachment feature that allows
the connector to engage and/or align two FRLs in
parallel relationship with each other such that a fluid
tight seal is maintained between the respective ports
on the FRLs.” When trying to locate a “flange,”
Norgren simply directs one to an “attachment
feature.” See, eg., Norgren Br. at 13-14 (claim
construction), 37 (infringement).

Furthermore, Norgren argues that one must look
at the “entire attachment feature.” Norgren Br. at 13,
15 (“The term ‘flange’ in the ‘392 patent claims can
only refer to the entire attachment feature on the
FRL.”). However, it is difficult, if not impossible, to
determine exactly what Norgren would delineate as
an “attachment feature” or more precisely, an “entire
attachment feature.”

Still, there are some illustrations of such features
provided by Norgren in connection with the
infringement issuc, and also specifically with regard
to claim construction, which shed some light on how
Norgren’s position could be applied. For example,
above in this section in which Norgren’s argument
was first summarized, see p. 17, there is a figure from
the Ribble prior art patent that was highlighted by
Norgren to show a “flange” such as that mentioned in

50a

the claim preamble. In that illustration, Norgren has
highlighted, among other things, the projecting rims
(or wedges), the structure that exists on a plane
between the rims (which includes the hole or port
through which fluid may flow), and the top part of the
structure that stands between the main body of the
FRL and the aforementioned surface with rims and a
port. However, there is no support in _ the
specification for designating any structure not
received into the clamp as a “flange” or a part thereof.

The language of claim 1 provides in part: “one of
said sides of the clamp being pivotally mounted so
that said one side can be pivoted out of said operative
clamping position zn order to permit reception of said
flanges into the clamp and then pivoted back into
said operative clamping position....”. JX-1, col. 4, ll
53-55 (emphasis added). Thus, the “flanges”
according to the plain language of claim 1 are the
portions each FRL that are received “into the clamp.”
This is consistent with the definition of a flange
proposed by SMC (and as to which the Staff is
amenable). However, this portion of the claim
language is contrary to the arguments set forth by
Norgren that would encompass the so-callea “entire
attachment feature,” which (although vague) is
shown by Norgren to include portions of the structure
behind the flange, which are not received into the
clamp. '®

16

As discussed, supra, the value, if any, of Wiskamp’'s
statements concerning patent terms is called into question by
the fact that he had not read the prosecution history at the time
of the hearing. Nevertheless, it should be noted that at one
point during the hearing, Norgren, though its expert, admitted

5la

The specification of the ‘392 patent provides
written and pictorial descriptions of flanges that are
consistent with the understanding provided by the
claim language. These portions of the specification
pertain to a preferred embodiment of the claimed
invention, and no need has been shown to restrict the

that the flange is the structure received into the clamp, as
follows:

Q. You testified, I believe yesterday, that a flange
means a connecting device. Is that true?

A. It goes into a connecting device, that’s what I meant
to say, the flange -- are we talking about the flange on
the compressor units?

Q. The flange that’s discussed in claim 1?

A. Yes. It’s part of that connection, it’s the connection
method it receives -- it’s used to make the connection.

Q. What’s your understanding of the term flange as it’s
used in claim 1 of the °392 patent?

A. It’s easier for me to show, but essentially if I were to
take a Norgren product or an SMC product, and note
ine entire structure that is received by the clamping
system, that which would be inside of the clamp would
be what I would consider the flange structure of the
compressed air components.

Q. So the flange would be inside the clamp —
A. What goes into the clamp, what would be -- what
would fit into the corresponding surfaces in the clamp.

It might be easier to show.

Wiskamp Tr. 441-442 (emphasis added).

52a

claims to the preferred embodiment. Thus, for
example, the claimed connecting structure need not
necessarily be adapted to engage flanges that are
exactly like those depicted in the specification.
Nevertheless, it is to be assumed that the
embodiments of the specification are consistent with
the claim language. In this instance, the flanges
described in the specification are consistent with the
understanding of the term provided by the claim
language. For example, in Figure 3 (reproduced above
in section III B) item 30 is labeled as “a rectangular
connecting flange,” and item 26 also depicts a flange
and the edges of the flanges. They are shown (to use
the precise claim language) following their “reception
into the clamp.” JX-1, col. 3, ll. 29-38, col. 4, 1. 28. See
Trumper Tr. 601-602 (discussing the flanges
described in the specification).

Consequently, the flange referred to in the
preamble of claim 1 is the structure with projecting
rims that is received into the clamp. A question
remains, however, as to whether there must be four
projecting rims, or whether it may have only two.

In view of the fact that the clamp must be four-
sided, and the clamp is specially adapted to engage
the generally rectangular ported flanges of the FRLs,
it is reasonable to conclude that the each rectangular
flange is engaged on all four of its sides by the four-
sided clamp. Thus, the clamp is adapted to engage
flanges with four projecting rims. The nature of the
clamp is further detailed immediately below.

53a

2. “a four-sided generally rectangular clamp
adapted, in its operative clamping
position, to engage, in parallel relationship
with one another, the pair of ported
flanges”

This portion of the language of claim 1 could be
addressed in unison, or broken into two parts, 1e., “a
four-sided generally rectangular clamp,” and the
remaining portion focused on the term “adapted”
(“adapted, in its operative clamping position, to
engage, in parallel relationship with one another, the
pair of ported flanges”). However, all of this claim
language occurs in series, and is punctuated after the
word “adapted” so as to group together the terms
“clamp” and its modifier “adapted.” Thus, it is useful
to discuss this text together, rather than treating it
as two separate claim limitations. In any event, as
seen throughout this claim construction analysis and
in many of the briefs filed by the parties, “flange,”
“clamp” and “adapted” are claim terms that
undisputedly have a close relationship in the ‘392
patent claims that reflects the fact that the flange
and adapted clamp structures work together in the
claimed connecting device to join together two fluid
flow elements (such as FRLs).!7

'? Norgren and the Staff have tied the “adapted” portion of the
claim language to other, specific portions of text that act as
distinct claim limitations. For example, in its main post-hearing
brief, Norgren groups under the same heading the term
“adapted” with the previously discussed claim term (ie, a
generally rectangular ported flange) because the adaptation at
issue relates to ported flanges. However, the text of Norgren’s

54a

Norgren argues that the words in the phrase “a
four-sided generally rectangular clamp” “need no
special definition and none of the parties contendls]
that there are any terms of art in this phrase or that
the specification limits the scope of the ordinary
meaning of the words.” Norgren, therefore, proposes
that the term be construed to mean “a clamp that has
four sides and is either rectangular or close to
rectangular in shape.” Norgren Br. at 15-16.

Further, as discussed above, while Norgren takes
that position that the generally rectangular ported
flanges are not a claim limitation, Norgren admits
that the four-sided clamp must be, as per the claim
language, “adapted in its operative clamping position,
to engage, in parallel relationship with one another,
the pair of ported flanges.” See Jd. at 9-10 (fn.
omitted). Of course, Norgren argues that such an
adaptation includes engagement with a flange having
only two projecting rims (or apparently even no such
rims), while SMC and the Staff argue that four rims
must be provided.

SMC states that the term “a _ four-sided,
generally rectangular clamp’ should be construed to

discussion also closely ties the “clamp” element to the term
“adapted.” See Norgren Br. at 9.

The Staff discusses the phrase “adapted . . . to engage” in
relation to the generally rectangular ported flanges, but treats it
as a separate limitation. See Staff Br. at 7 (claim construction),
14-16 (claim construction), 29 (infringement), 31-32
(infringement).

SMC does not treat “adapted” and text that immediately
follows it as a distinct claim limitation. See SMC Br. at 12-19.

55a

mean a rectangular-shaped clamp having four sides.”
SMC Br. at 16. SMC states that this construction in
consistent with the ‘392 patent specification and
prosecution history, as well as the testimony of its
expert concerning the understanding of one of
ordinary skill in the art. /d. at 16-19. SMC observes
in its reply brief that its proposed construction agrees
with that of Norgren and the Staff. SMC Reply Br. at
6.

In its reply, SMC further notes Staff's concern
that SMC may be attempting to read the term
“generally” out of the claims by, among other things,
leaving the word “generally” out of its proposed
construction for this term as recited in its proposed
construction. See /d. at 6 (citing Staff Br. at 16-18).
However, SMC clarifies in its reply that “the
pertinent feature being claimed by this limitation is
that the clamp has four sides and is rectangular in
shape (be it perfectly or imperfectly rectangular).” Jd.
In addition, SMC concurs with the view of the Staff
(detailed below) that the four sides of the rectangular
clamp must “engage” the generally rectangular
ported flanges so as to fit over said flanges and not
merely be in contact with them. Jd.

Indeed, the Staff argues that “a four-sided
generally rectangular clamp” is a “rectangular or
close to rectangular shaped clamp having four sides.”
Staff Br. at 16. Further, the Staff does argue (as
anticipated by SMC) that the clamp must be adapted
so as to “fit over the ‘generally rectangular ported
flanges’ not merely be in contact with them.” Staff
Br. at 14. Staff submits that such a construction is
consistent with the specification, and also the

56a

prosecution history in which Norgren, on behalf of
the applicant, distinguished the claimed clamp from
the prior art by arguing that its clamp can be pivoted
out of its operative position in order “to fit the clamp
over flanges of fluid flow element.” Jd at 14-15
(quoting JX-2, May 29, 1994 Amendment, pages 4-5).

This Tribunal concurs that “a four-sided
generally rectangular clamp” is rectangular or close
to rectangular in its shape, and thus has four sides.
It is further determined that the clamp must be
adapted to engage the generally rectangular ported
flanges of the “fluid flow elements” described in the
claim preamble. Thus, the dimensions of the sides of
the clamp must accommodate the sides of the flanges.

In addition, for the reasons stated by the Staff,
which are grounded in the prosecution history of the
asserted patent, the clamp must be adapted so that it
fits over the flanges of the FRLs. See Hkchian v.
Home Depot, Inc., 104 F.3d 1299, 13804 (Fed. Cir.
1997)(“[Slince by distinguishing the claimed
invention over the prior art, the applicant is
indicating what the claims do not cover, he is by
implication surrendering such protection.”). Indeed,
it is clear that when the applicants amended their
claims to overcome a prior art rejection under 35
U.S.C. § 103 (obviousness), they differentiated their
claimed invention by stating that the clamp fits over
the flanges, as follows:

Neither of the primary references,
Edmaier and Abbes, discloses a clamp of
rectangular shape wherein one of the sides
is pivotally mounted so that it can be

57a

pivoted out of its operative position in
order to fit the clamp over flanges of fluid-
flow elements.

JX-2, May 29, 1994 Amendment, pages 4-5 (emphasis
added). Norgren’s application was subsequently
allowed. See JX-002, June 8, 1994 Notice of
Allowability.

The four-sided clamp must engage, or fit over,
the flanges of the fluid flow elements, and in doing so
it necessarily fits over all four edges of the generally
rectangular flanges. The applicants did not tell the
examiner that the clamp fits over only part of the
flange. In fact, there is nothing in the claim
language, the specification, or the prosecution history
to suggest anything less.

Norgren offers no explanation as to why, if the
clamp were adapted to engage a flange with only two
projecting rims, the claim emphasizes the generally
rectangular shape of the flange, and moreover, why
the claim requires as a limitation that the clamp be
four-sided. There is nothing in the claim language,
the specification, or the prosecution history (quoted
above) to indicate that somehow a four-sided clamp
fitting over a generally rectangular (.e., four-sided)
flange could fit over only two sides of the rectangle, or
how a rectangle could have only two sides.

The mechanics of how the clamp in the claimed
invention engages, or fits over, all four sides is
clarified by understanding that one side of the clamp
is “pivotally mounted,” a claim limitation discussed
immediately below.

58a
3. “pivotally mounted”

With respect to the sides of the required four-
sided, generally rectangular clamp, claim 1 provides:
“one of said sides of the clamp being pivotally
mounted so that said one side can be pivoted out of
said operative clamping position in order to permit
reception of said flanges into the clamp and then
pivoted back into said operative clamping position ....”
JX-1, col. 4, 11.53-57 (emphasis added).

The fact that the claimed clamp has a side that is
“pivotally mounted” relates to the manner in which
the clamp engages the flanges on the two fluid flow
elements in order to join them. As discussed above,
the connector’s clamp structure must cover the flange
on each fluid flow element, rather than merely
coming into contact with the flanges. As described in
the claim language, to allow the clamp to fit around a
flange, one of its sides may be moved and then
secured back in place. In the words of the claim, one
side is “pivotally mounted” on the remaining portion
of the clamp. That much is undisputed.

However, questions have been raised in this
investigation regarding the mounting itself, and
specifically whether the clamp is limited so that the
side that can pivot must be mounted in a “hinge-like”
manner so as to have “no loose parts.”

SMC relics on the specification and expert
testimony to argue that “the proper construction of
the term ‘pivotally mounted’ is a hinge-like mount
with no loose parts.” SeeSMC Br. at 19-21. Norgren
rejects any such additional hmitations to the claim

59a

structure, and proposes that “pivotally mounted”
means “placed or fastened in a way that allows an
object to move about a point.” See Norgren Br. at 16-
20. Similarly, the Staff rejects the additional
limitations proposed by SMC, and argues that
“pivotally mounted” should be construed as “placed or
fastened in a way that allows an object to move about
a point.” See Staff Br. at 18-23.

SMC’s proposed construction is rejected. The
term at issue, ze, “pivotally mounted,” tells the
reader “how” the side of the clamp moves, z.e., it
“pivots;” it is “pivotally mounted.” SMC seeks to
convert the language at issue into the noun, or the
thing itself, 2e., SMC argues that “pivotally mounted”
means “a hinge-like mount.” Yet, the term “pivotally
mounted” says nothing about the physical structure
of the side of the claimed clamp that pivots, or the
structure by which it is mounted on the rest of the
clamp. It does not say whether the side is capable of
pivoting because it is mounted on a hinge, hinge-like
structure, or by some other means. Nor does the
term “pivotally mounted” indicate whether or not
there are loose parts.

SMC’s claim construction would also
impermissibly limit the claims of the ‘392 patent to a
preferred embodiment. Although the ‘392
specification repeatedly emphasizes “a hinge-like
mount” and “no loose parts,” it does so exclusively in
the context of preferred embodiments. }8

18 See JX°1, col. 1, ll. 32-36 (a “preferably unitary connecting
means’); col. 2, ll. 1-4 (“Preferably, the said one side of the clamp
is pivotally mounted on the spacer or on an adjacent side of the
clamp by means of a hinge-like mounting.”); col. 2, ll. 5-9

60a

Consequently, inasmuch as the inventors emphasized
that a “hinge-like mount” and “no loose parts” are
preferred embodiments, the claims should not be so
limited. See E-Pass Techs., Inc. v. 3Com Corp., 343
F.3d 1364, 1370 (Fed. Cir. 2003)(“An invention may
possess a number of advantages or purposes, and
there is no requirement that every claim directed to
that invention be limited to encompass all of them.”).

Moreover, as noted by the Staff, it appears that
the ‘392 specification discloses an embodiment that
does not require a “hinge-like mount” for purposes of
“pivotally mounting” one side of the clamp.!9 In
particular, the device depicted in Figure 1
(reproduced above in section III B, at page 10)
utilizes “a generally U-shaped stirrup 17 pivotally
hung on the L-shaped projection 14,” attached to a
spacer (labeled as item 2). JX-1, col. 2, 1. 66 through
col. 4, 1. 1. The specification does not characterize
this embodiment as having a “hinge-like mount.” In
contrast, the specification also discloses in Figure 5,
an “alternative design” to that disclosed in Figure 1,

(“Accordingly, it will be appreciated that the connecting means
of the invention may be a unitary structure in the sense that it
has no loose parts that might otherwise get lost by the
user.”emphasis added); col. 3, ll. 57-61 (“[T]he preferred
connecting means of the invention described above is, when its
components are assembled together, unitary in nature, is
relatively simple and inexpensive to manufacture and is simple
to manipulate.”)(emphasis added)); col. 3, ll. 62-66 (a “hingedly
mounted” preferred embodiment).

'? As a general rule, claim interpretations that operate to
exclude the preferred embodiment, are “rarely, if ever, correct
and require highly persuasive evidentiary support.” Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996).

6la
in which the elements are “retained together in
hinge-like fashion by means of a pin 37 that passes
through the bore 35.” JX-1, col. 2, ll. 24-27; col. 4, ll.
3-15. Thus, the specification supports a broader

definition of the term “pivotally mounted,” than one
requiring a hinge-like mount.

Finally, although claim differentiation cannot be
used unjustifiably to broaden the scope of the claims,
it can be relied on as support for a claim construction
that is entirely consistent with the intrinsic record.
See Phillips, 415 F.3d at 1324-35 (relying on the
doctrine of claim differentiation to support the
conclusion that one skilled in the art reading the
specification would not limit the claims to a preferred
embodiment). Moreover, a claim construction that
renders a dependent claim _ superfluous is
presumptively unreasonable. Beachcombers _ v.
Wilde Wood Creative Prods., Inc., 31 F.3d 1154, 1162
(Fed. Cir. 1994). In this instance, dependent claims 5
and 7, add the limitation that “one side of the clamp
is captively and pivotally mounted.” The use of the
term “captively” suggests that one side of the clamp is
mounted in a secure or confined fashion such that
there are no loose parts. The use of the word
“captive” in claims 5 and 7 also shows that the
patentee did not intend the “pivotally mounted” side
of the clamp inclaim 1 necessarily to be captive.

When questioned during the hearing about the
difference between “pivotally mounted” and
“captively,” as used in the claims, SMC’s expert
testified that they meant the same thing. See
Trumper Tr. 659. This trend continues in SMC’s
brief that downplays the dependent claims with

62a

additional limitations based on the term “captively.”
However, if those words have the same meaning in
the ‘392 patent, then the dependent claims have
sought to add superfluous limitations. It is improper,
however, to eliminate claim limitations as every word
in a claim is material and must be considered.
Bincon, Inc. v. Strauman Co., 441 F.3d 945, 950 (Fed.
Cir. 2006)(“[C]laims are interpreted with an cye
toward giving effect to all terms in the claim.”).

Accordingly, for the reason stated above,
“pivotally mounted” is construed to mean “placed or
fastened in way that allows an object to move about a
point.” A hinge-like mounting with no loose parts is
not required.

IV. INFRINGEMENT DETERMINATION

As detailed above, Norgren accuses SMC
products of infringing one or more claims of the
asserted ‘392 patent. It is argued that although the
products literally infringe the asserted claim,
infringement could, in the alternative, be found
under the doctrine of equivalents. See Norgren Br. at
23-38.

A. Applicable Law

In a section 337 investigation, the complainant
bears the burden of proving infringement of the
asserted patent claims by a preponderance of the
evidence. Certain Flooring Products, Inv. No. 337-
TA-443, Commission Notice of Final Determination of »
No Violation of Section 337, 2002 WL 448690 at 59,
(March 22, 2002); Enercon GmbH v. Int'l Trade
Comm'n, 151 F.3d 1376 (Fed. Cir. 1998).

63a

Each patent claim element or limitation is
considered material and essential. London v. Carson
Pirie Scott & Co., 946 F.2d 1534, 1538 (Fed. Cir.
1991). Literal infringement of a claim occurs when
every limitation recited in the claim appears in the
accused device, ie, when the properly construed
claim reads on the accused device exactly. AmaAz/
Enters., Ltd v. Wawa, Inc., 81 F.3d 1554, 1562 (Fed.
Cir. 1996); Southwall Tech. v. Cardinal IG Co., 54
F.3d 1570, 1575 (Fed Cir. 1995).

If the accused product does not literally infringe
the patent claim, infringement might be found under
the doctrine of equivalents. The Supreme Court has
described the essential inquiry of the doctrine of
equivalents analysis in terms of whether the accused
product or process contains elements identical or
equivalent to each claimed element of the patented
invention. WarnerJenkinson Co., Inc. v. Hilton
Davis Chemical Co., 520 U.S. 17, 40 (1997).

Under the doctrine of equivalents, infringement
may be found if the accused product or process
performs substantially the same function in
substantially the same way to obtain substantially
the same result. Va/mont [ndus., Inc. v. Reinke Mfg.
Co., 983 F.2d 1039, 1043 (Fed. Cir. 1993). The
doctrine of equivalents does not allow claim
limitations to be ignored. Evidence must be presented
on a limitation-by-limitation basis, and not for the
invention as a whole. Warner-Jenkinson, 520 U.S. at
29; Hughes Aircraft Co. v. U.S., 86 F.3d 1566 (Fed.
Cir. 1996). Thus, if an element is missing or not
satisfied, infringement cannot be found under the
doctrine of equivalents as a matter of law. See, e.g.,

64a
Wright Medical, 122 F.3d 1440, 1444 (Fed. Cir. 1997);
Dolly, Inc. v. Spalding & Evenflo Cos., Inc., 16 F.3d
394, 398 (Fed. Cir. 1994); London v. Carson Pirie
Scott & Co., 946 F.2d 1534, 1538-39 (Fed. Cir. 1991);
Becton Dickinson and Co. v. C.R. Bard, Inc., 922 F.2d
792, 798 (Fed. Cir. 1990).

The concept of equivalency cannot embrace a
structure that is specifically excluded from the scope
of the claims. AtA/etic Alternatives v. Prince Mfg.,
Inc., 73 F.3d 1573, 1581 (Fed. Cir. 1996). In applying
the doctrine of equivalents, the Commission must be
informed by the fundamental principle that a patent’s
claims define the limits of its protection. See Charles
Greiner & Co. v. Mari-Med. Mfg., Inc., 92 F.2d 1031,
1036 (Fed. Cir. 1992). As the Supreme Court has
affirmed:

Each element contained in a patent claim
is deemed material to defining the scope of
the patented invention, and thus the
doctrine of equivalents must be applied to
individual elements of the claim, not to the
invention as a whole. It is isaportant to
ensure that the application of the doctrine,
even as to an individual element, is not
allowed such broad play as to effectively
eliminate that element in its entirety.

Warner-Jenkinson, 520 U.S. at 29.

Prosecution history estoppel may bar the
patentee from asserting equivalents if the scope: of
the claims has been narrowed by amendment during
prosecution. A narrowing amendment may occur

65a

when either a _ preexisting claim limitation is
narrowed by amendment, or a new ciaim limitation is
added by amendment. These decisions make no
distinction between the narrowing of a preexisting
limitation and the addition of a new limitation.
Either amendment will give rise to a presumptive
estoppel if made for a reason related to patentability.
Honeywell Int] inc. v. Hamilton Sundstrand Corp.,
370 F.3d 1131, 1139-41 (Fed. Cir. 2004), cert. denied,
545 U.S. 1127 (2005)(citing Warner-Jenkinson, 520
U.S. at 22, 33-34; and Festo Corp. v. Shoketsu
Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 733-34,
741 (2002)). The presumption of estoppel may be
rebutted if the patentee can demonstrate that: (1) the
alleged equivalent would have been unforeseeable at
the time the narrowing amendment was made; (2) the
rationale underlying the narrowing amendment bore
no more than a tangential relation to the equivalent
at issue; or (3) there was some other reason
suggesting that the patentee could not reasonably
have been expected to have described the alleged
equivalent. Honeywell, 370 F.3d at 1140 (citing, inter
alia, Festo Corp. v. Shoketsu Kinzoku Kogyo
Kabushiki Co., 344 F.3d 1359 (Fed. Cir. 2003)(en
bano)).

B. Analysis of the Accused Products

As discussed above in section I B (Products at
Issue), Norgren alleges that some or all of the SMC
products at issue infringe all claims of the ‘392
patent, except claims 6 and 8, as follows: claim 1 (all
connectors), claim 2 (all connectors), claim 3 (all
connectors), claim 4 (all connectors), claim 5 (all
connectors), claim 7 (all connectors), and claim 9

66a

(SMC’s fluid flow elements when engaged with a
connector). It is alleged that the infringement occurs
literally, or in the alternative, under the doctrine of
equivalents. See Norgren Brief at 21-38.

1. Claim 1
a. No Literal Infringement

As discussed above in section I B, SMC’s Y400 is
representative of the “new style” connectors accused
of infringing independent claim 1, as well as several
dependent claims of the ‘392 _ patent. A
representative depiction of SMC’s new style
connector, similar to that found in Norgren’s brief,
the Staff's brief, and CX-82 (an SMC catalog) is

reproduced below:

Y400

For the reasons stated below, it is found that the
accused Norgren connectors do not literally infringe
claim 1.

i. a four-sided generally rectangular clamp
adapted, in its operative clamping position, to
engage, in parallel relationship with one
another, the pair of ported flanges

67a

As held in the section on claim construction,
claim 1 requires a four-sided, generally rectangular
clamp adapted to engage a pair of generally
rectangular ported flanges located on two fluid flow
elements. In particular, it was determined that the
clamp must engage four projecting rims on each
flange. As seen in a representative sample of an
SMC FRL, marked as RPX-11, the SMC units to
which the accused products connect have two, not
four, ear-like projections on either side of the port.
See RPX-11. This distinction is fatal to Norgren’s
infringement case.

Taku Tomita, the designer of the accused SMC
products and FRL units, explained during the
hearing that the accused products are all adapted to
connect to these two ear-like projections rather than
a generally rectangular ported flange. See Tomita Tr.
586-588. SMC’s technical expert, Dr. Trumper,
confirmed that SMC’s FRL units have two ear-like
projections and not a generally rectangular ported
flange. In particular, Dr. Trumper explained that
there are no projections on the top and bottom of
SMC’s modular FRL units. There are mounting ears
only on the left and right sides of the unit. See
Trumper Tr. 606. Dr. Trumper also confirmed that
SMC’s accused products are not adapted to connect to
a “generally rectangular flange” with four projecting
rims. See Trumper Tr. 601, 604-605, 607.

Norgren has argued, however, that SMC’s
accused products are adapted to engage flanges of
various types, including a modified flange of a
Norgren product that normally has four projecting
rims, as represented by CPX-8. See Norgren Br. at

68a

27-28. This exhibit and Norgren’s related testimony
have no probative value, and do not demonstrate that
SMC’s accused products meet the claim limitation for
at least two reasons.

First, Norgren was unable at the hearing to
explain how the Norgren FRL unit was modified, or
who made the modifications. Nor was any
explanation provided by complainant for the fact the
modified FRL had been repainted in a manner such
that the modifications were not readily apparent. See
Wiskamp Tr. 433-436. Second, and perhaps most
telling, is the fact that Norgren had to modify the
Norgren FRL unit in order to attach it to SMC’s
accused connector. This modification demonstrates
that the connector is not in fact adapted to engage 2
generally rectangular ported flange.

Further, as explained above in the section on
claim construction, in the context of the asserted
claims, “engage” means “fits over.” Thus, claim 1
requires that each side of the four-sided, generally
rectangular clamp must fit over a corresponding side
of the “generally rectangular ported flange.” SMC’s
accused connector, however, does not fit over a
generally rectangular ported flange, ie, a flange
having projections on all four sides, as claimed by the
‘392 patent. The evidence presented at the hearing
confirms that only the two wing-like parts on the
retainer located on SMC’s accused connectors fit over
the two ear-like projections on the SMC FRL unit.
See Tomita Tr. 586-587.29 Thus, the fact that SMC’s

*° A visual inspection of RX-6 (an SMC connector) and RX-10 (an
SMC FRL) shows that when they are connected, the wings on

69a

accused devices only fit over two “projecting ears,”
rather than a flange having projecting rims on all
four sides, is yet another reason why the SMC
accused devices do not literally infringe claim 1 of the
‘392 patent.

In sum, based on the above, the evidence shows
that the accused products do not provide a four-sided,
generally rectangular clamp that is adapted to
engage a pair of generally rectangular ported flanges,
as required by claim 1. Thus, SMC’s infringement
claim must fail.

Nevertheless, it is found that the accused SMC
connectors do provide a “four-sided generally
rectangular clamp,” even though that clamp is not
adapted in such as way as to infringe. SMC and its
expert contends that the accused connectors are two-
sided, not four-sided. See, e.g., Trumper Tr. 609. The
record evidence shows otherwise.

At the hearing, SMC contended that the two
sides of its accused connectors consist of a front

the sides of the clamp fit over the projecting rims on the sides of
an FRL flange, while the top of the flange rests against two
small, block-like features that Dr. Trumper calls “alignment
details” located at the top of the clamp. The flange is not
received into that portion of the clamp. In fact, Dr. Trumper
testified that the top of the “FRL,” rather than the top of the
“flange” rests against the so-called alignment details,
presumably because there is no projecting rim on that edge of
the FRL. Meanwhile, the bottom of the flange stops at the point
of a long horizontal indentation or “groove” into which a bar or
“spacer” of the clamp fits. The spacer does not, however, fit over
the bottom of the flange. It is simply tightened into the groove.
See Trumper Tr. 640-642 (cross-examination concerning the
connection between RPX-6 and RPX-10).

70a

retaining clip and a back retaining clip. See Trumper
Tr. 609 (“Yes, this is a two-sided clamp, the clamping
is effected with these retaining clippings, as we’ve
called them, or retainers, there’s an outer retainer,
and then there’s an inner retainer... .”). However,
as observed at the hearing, in order for SMC’s
connector to function properly all four sides of the
connecter were needed, which include the bolt, the
pin, and the spacer. See Trumper Tr. 684-685. Thus,
as assembled in the accused devices, the clamps do
have four sides as required by claim 1. There is no
dispute that its shape is generally rectangular.
Nonetheless, as noted above, because the accused
connectors do not accept generally rectangular ported
flanges, Norgren’s infringement assertion as to claim
1 must still fail.

it. SMC’s Accused Connectors Include a
Pivotally Mounted Side

As detailed above in the section on claim
construction, claim 1 does not require that one side of
the clamp be hingedly-mounted so as to have no loose
parts, as argued by SMC. Rather, in order to meet
the “pivotally mounted” limitation, the side need only
be “placed or fastened in way that allows an object to
move about a point.”

SMC’s accused connectors contain at least one
side that is placed or fastened in such a way that it
can move about a point. While it is not hingedly-
mounted, which SMC would require, there is no
genuine dispute that the accused connectors contain
such a feature. See SMC Br. at 28-30; Wiskamp Tr.
275. However, for the reasons mentioned above, the

7la

finding that the accused devices do not infringe claim
1 remains unchanged.

b. The Doctrine of Equivalents

Norgren devotes approximately three pages of its
post-hearing brief to its argument that to the extent
the elements of the ‘392 patent are not literally
present in the SMC devices, SMC infringes under the
doctrine of equivalents. See Norgren Br. at 36-38.
SMC and the Staff argue that Norgren is estopped
from arguing the doctrine of equivalents, at least
with respect to claim 1, the only independent claim
asserted, and further that the record lacks of any
pertinent evidence. See SMC Br. at 31-34; Staff Br.
at 31-32.

It is found that Norgren is barred from asserting
the doctrine of equivalents as to key claim limitations
that are relevant to the infringement issues in this
investigation. As discussed above in section IV A,
under the Supreme Court’s Festo opinion and similar
case law, prosecution history estoppel may bar the
patentee from asserting equivalents if the scope of
the claims has been narrowed by amendment during
prosecution. In this case, claim 1 was initially
rejected by the PTO examiner under 35 U.S.C. § 112
because it was unclear as to whether the FRLs with
their flanges were part of the claimed combination.
See JX-2, February 25, 1994 Office Action, page 2. In
response, Norgren amended claim 1, as follows:

Connecting [means] structure for

contiguously connecting together a pair of
fluid-flow elements, each fluid flow element

72a

including a generally rectangular _ ported
flange so as to define a pair of ported
flanges associated with the _fluid-flow
elements....

JX-2, May 29, 1994 Amendment, page 1.?!

Thus, when Norgren amended claim 1, it
relinquished coverage of a clamp designed to engage
fluid-flow elements with flanges of any configuration.
Instead, Norgren limited the scope of claim 1 to a
clamp designed to operate with elements that have
generally rectangular ported flanges, ie. flanges
having four sides. Moreover, as discussed in
connection with the claim construction issues,
Norgren distinguished its claimed invention, and
traversed the examiner’s rejection, by arguing that
its connector is designed “to fit the clamp over flanges
of fluid flow elements.” JX-2, May 29, 1994
Amendment, pages 4-5. Thus, Norgren argued that
the clamp fits over generally rectangular flanges, not
parts of flanges (e.g., only two sides) or not at all (e.z.,
a flange with no rims over which a clamp could fit).

Norgren cannot now seek to regain, through the
doctrine of equivalents, that which it surrendered to
obtain issuance of the patent. Thus, it could not be
found that claim 1 is infringed, even under the
doctrine of equivalents, by a clamp that fits around
only two sides of a generally rectangular flange,
effectively rendering the rectangular shape of the
flanges and the clamp meaningless. Nor could

7! Pursuant to PTO practice, underlining indicates language
added to the claim and brackets indicate language deleted from
the claim. See Grauer Tr. 728.

73a

Norgren argue that the clamp engages the flanges in
any manner other than by fitting around them. For
at least those reasons, the SMC connector, which
does not fit around four sides of a flange (but rather
fits over only a portion of two projecting rims), could
not be found under the doctrine of equivalents to
satisfy the lmitations of independent claim 1.

In addition, SMC and the Staff are correct in
their arguments that the record contains little, if any,
evidence to support a finding of infringement under
the doctrine of equivalents. Norgren’s scant citations
to the record (which largely depend upon the
testimony of SMC’s Dr. Trumper and Taku Tomita)
do not present a case of infringement under the
doctrine of equivalents. See Norgren Br. at 37. In
fact, SMC’s witnesses aside, Norgren would have
been hampered in any attempt to put on a case of its
own concerning the doctrine of equivalents given the
damaging testimony of its own expert. In that
regard, during cross-examination at the hearing in
this investigation, SMC adduced the following
testimony from Norgren’s expert:

Q. And I guess the correct lines would be 4
through 15. And the question was, “do you
understand what type of infringement
you're arguing there?

“Answer: No.I|“]

“Question: Do you’ understand the
difference between literal infringement
and infringement under the doctrine of
equivalents?”

74a

And then the answer is “no.”

And this was your testimony on, as I say,
October 12 of ‘07. So would it be fair to say
at that time, you did not understand the
difference between literal infringement
and infringement under the doctrine of
equivalents?

A. I stand by what I said.

Q. And do you recall that you had already
submitted an expert report at that time?

A. Yes.

Q. And the testimony you gave on direct,
do you think any of that testimony was
directed to doctrine of equivalents
infringement?

A. I don’t know.

Q. Would it be fair to say that even today
you do not understand the difference
between literal infringement and doctrine
of equivalents infringement?

A. Correct.

Wiskamp Tr. 432-433 (emphasis added).??

*? Despite this admission, Wiskamp’s expert reports nonetheless
contain statements that were written in view of the doctrine of
equivalents. Most notable is the following:

75a

Due to the fact that Norgren is estopped from arguing
the doctrine of equivalents with respect to certain
aspects of claim 1, and in view of the lack of record
evidence concerning the doctrine of equivalents, it is
not found that the accused SMC products infringe
claim 1 under the doctrine of equivalents.

2. Claims 2-5, 7 and 9

Inasmuch as each claim limitation must be
present in an accused device in order for
infringement to be found (either literally or under the
doctrine of equivalents), a device cannot infringe a
dependent claim if it does not practice every
limitation of the independent claim from which it
depends. See WarnerJenkinson Co., 520 U.S. at 40;
Monsanto Co. v. Syngenta Seeds, Inc., 503 F.3d 1352,
1359 (Fed. Cir. 2007). Therefore, in this instance,

83. If the court determines that the flange must
have rims on each of the four sides, then the SMC
attachment feature performs the same function
described in the ‘392 patent specification in the
same way and with the same result. The SMC
attachment feature has flanges with two edges that
urge the two air conditioning units together when
the connector’s locking means is tightened.

Rebuttal Expert Report of John C. Wiskamp, { 83, page 17 (filed
Sept. 19, 2007)(emphasis added).

Yet, as seen in the transcript portion, quoted supra, Mr.
Wiskamp testified that he was ignorant of the doctrine of
equivalents. In any event, during the hearing he did not
analyze SMC’s devices in terms of the function-way-result test
recited in the rebuttal report, nor did he in any other manner
provide testimony to support the statements that are contained
in his expert reports which relate to the doctrine of equivalents.

76a

inasmuch as no accused product contains each
limitation of the only independent claim, which is
claim 1, none of the other asserted, dependent claims
can be found to infringe.

However, it noted that with respect to the
infringement issue (as opposed to the claim
construction issue), SMC did not brief the particular
limitations added by the asserted dependent claims.
Rather, SMC relied on its non-infringement of
independent claim 1 to argue that the dependent
claims are not infringed. See SMC Br. at 31; SMC
Reply Br. at 10-14. In contrast, Norgren provided at
least a cursory briefing for all of the dependent
claims, with citations to record evidence. See
Norgren Br. at 32-36. Consequently, if it were found
that SMC infringed claim 1, SMC might also be
exposed to liability for infringement of the other
asserted claims.

In addition, claim 9 deserves special attention
because it contains a substantially more detailed
definition of a fluid flow element, and Norgren sets
forth broader infringement allegations with respect to
claim 9. Claim 9 provides, as follows:

9. Connecting structure according to claim
1, wherein said fluid flow elements include
a first compressed air-conditioning unit
and a second air-conditioning unit, said
clamp being constructed and arranged to
connect said first compressed _§air-
conditioning unit to said second air
conditioning unit.

T7a
JX-1, col. 6, ll. 16°21.

Norgren argues that “[c]]aim 9 includes within
its scope the FRLs that are adapted to engage with
the SMC connector.” Norgren Br. at 34. It submits
that contrary to some of the arguments raised during
the pre-hearing phase of this investigation, nothing
in the prosecution history prevents FRLs from being
added as an additional limitation on the invention by
claim 9. However, Norgren offers little to
demonstrate that FRLs are actually added as a
limitation. See /d. at 34-36.

Rather, claim 9 by its plain language defines the
fluid flow elements referred to in claim 1 (beginning
in the preamble) such that according to claim 9 they
must include first and second air-conditioning units.
However, as discussed at length above, this Tribunal
agrees with Norgren that the fluid flow units are not
in and of themselves limitations on the invention
claimed in claim 1; and nor are they limitations with
respect to claim 9. Claim 9 merely further defines
the fluid flow elements to be joined by the claimed
connector. As in the case of claim 1, the clamp of
claim 9 is a limitation on the invention. The claimed
clamp must not only be adapted to engage generally
rectangular ported flanges, as in claim 1, but in
accordance with claim 9 the clamp must be
“constructed and arranged to connect said first
compressed air-conditioning unit to said second air-
conditioning unit.”

Granted, there is a symmetry between claim 1
and claim 9 in the way that the fluid flow elements
are further defined in claim 9, and in the way that

78a

the plain language of claim 9 further limits the clamp
to be used with such air-conditioning units. There is,
however, no indication in the language of claim 9 that
the air-conditioning units are limitations on the
claimed invention. Indeed, as in the case of claim 1,
the plain language of claim 9 states that a
“Iclonnecting structure” is claimed, not a fluid flow
element such as an FRL, or any type of air-
conditioning unit.

In addition, Norgren cites to no support for this
broader infringement argument in the specification,
and indeed none is there. This fact further supports
a finding that Norgren’s infringement argument with
respect to claim 9 is in error. If claim 9 were
construed to cover FRLs or an “air conditioning unit,”
a substantial question would be raised as to whether
or not the specification adequately supports claim 9.

Consequently, claim 9 is not infringed because
independent claim 1 is not infringed. Further, even if
claim 9 were infringed, a finding of infringement
could not extend to SMC’s FRLs, but would cover only
the accused connectors.

As stated above in section I B, Norgren accuses of
infringement SMC’s FRLs and “lelvery larger
pneumatic system that incorporates the SMC
connector and FRLs.” See Norgren Br. at 21-23. Yet,
the only infringement argument made by Norgren
that could possibly be understood to address products
other than SMC’s connectors is the above argument
concerning claim 9. Even if Norgren had intended to
set forth other legal or factual arguments are to why
devices other than connectors should be found to

79a

infringe, it did not do so. Nevertheless, as stated
above, the question of whether SMC FRLs and
pneumatic systems should be excluded = as
downstream products, not necessarily as infringing
products, will be discussed in the Recommended
Determination on the question of remedy.

V. VALIDITY
A. Background

One cannot be held lable for practicing an
invalid patent claim. See Pandro/ USA, LP v.
AirBoss Railway Prods., Inc., 320 F.3d 1354, 1365
(Fed. Cir. 2003). However, the claims of a patent are
presumed to be valid. 35 U.S.C. § 282; DMI Inc. v.
Deere & Co., 802 F.2d 421 (Fed. Cir. 1986). Although
a complainant has the burden of proving a violation
of section 337, it can rely on this presumption of
validity. A respondent that has raised patent
invalidity as an affirmative defense must overcome
the presumption by “clear and convincing” evidence of
invalidity. Checkpoint Systems, Inc. v. United States
Int'l Trade Comm’n, 54 F.3d 756, 761 (Fed. Cir.
1995).

SMC argues as an affirmative defense in this
investigation that the asserted claims of the ‘392
patent are invalid. In particular, SMC argues that
the claims are invalid as obvious under 35 U.S.C. §
103. SMC asserts that its allegations are not
dependent on the application of Norgren’s proposed
claim construction, but that the claims are obvious
even under SMC’s narrower proposed construction.
Numerous grounds of potential obviousness were

80a

raised during this investigation. However, in its
post-hearing brief, SMC argues that the claims are
invalid in view of (1) SMC’s older style connector from
1984, with U.S. Patent No. 4,533,020 to Yamazaki
(RX-22) as a description of SMC’s older style
connector, and (2) a combination of U.S. Patent No.
4,400,018 to Abbes et al. (RX-21) and U.S. Patent No.
4,915,418 to Palatchy (RX-27).23 See SMC Br. at 34-
43; RPFF 93-94 (concerning the Yamazaki patent,
which is not raised directly in SMC’s brief); RPCL 4-
6.

Norgren denies that its asserted claims are
invalid. See Norgren Br. at 38-44. The Staff argues
that the asserted claims are not invalid when
properly construed. The Staff does, however, argue
that under Norgren’s overly broad construction of the
claims, they would be invalid. See Staff Br. 33-43.

B. Applicable Law of Obviousness

Obviousness is grounded in 35 U.S.C. § 103,
which provides, znter alia, that:

A patent may not be obtained though the
invention is not identically disclosed or
described as set forth in section 102 of this
title, if the differences between the subject
matter sought to be patented and the prior
art are such that the subject matter as a
whole would have been obvious at the time
the invention was made to a person having
ordinary skill in the art to which said

23 SMC made only passing reference to other prior art to
reinforce its main arguments. See SMC Br. at 39 n.7.

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subject matter pertains. Patentability
shall not be negatived by the manner in
which the invention was made.

35 U.S.C. § 103(a).

An allegation of obviousness is evaluated under
the so-called Graham factors: (1) the scope and
content of the prior art; (2) the differences between
the prior art and the claims at issue; (3) the level of
ordinary skill in the art; and (4) objective evidence of
nonobviousness. Graham v. John Deere Co., 383 U.S.
1, 13-17 (1966).

“One of the ways in which a patent’s subject
matter can be proved obvious is by noting that there
existed at the time of invention a known problem for
which there was an obvious solution encompassed by
the patent’s claims.” ASR Int'l Co. v. Teleflex Inc.,
No. 04-1360, _.. U.S. __., 127, 3.Ct. 1727, 1742
(2007). “[A]ny need or problem known in the field of
endeavor at the time of invention and addressed by
the patent can provide a reason for combing the
elements in the manner claimed.” /d.

Specific teachings, suggestions or motivations to
combine prior art may provide helpful insights into
the state of the art at the time of alleged invention.
Id. at 1741. Nevertheless, “an obviousness analysis
cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation, or by
overemphasis on the importance of published articles
and the explicit content of issued patents. The
diversity of inventive pursuits and of modern
technology counsels against limiting the analysis in

82a
this way.” Jd. “Under the correct analysis, any need
or problem known in the field of endeavor at the time
of invention and addressed by the patent can provide
a reason for combining the elements in the manner
claimed.” Jd. at 1742. A “person of ordinary skill is
also a person of ordinary creativity...” Jd.

The Federal Circuit has harmonized the KSR
opinion with many prior circuit court opinions by
holding that when a patent challenger contends that
a patent is invalid for obviousness based on a
combination of prior art references, “the burden falls
on the patent challenger to show by clear and
convincing evidence that a person of ordinary skill in
the art would have had reason to attempt to make
the composition or device, or carry out the claimed
process, and would have had a reasonable expectation
of success in doing so. PharmaStem Therapeutics,
Inc. v. ViaCell, Inc., 491 F.3d 1342, 1360 (Fed. Cir.
2007)(citing Medichem S.A. v. Rolabo S.L., 437 F.3d
1175, 1164 (Fed. Cir. 2006)); Noelle v. Lederman, 355
F.3d 1343, 1351-52 (Fed. Cir. 2004); Brown &
Wiliamson Tobacco Corp. v. Philip Morris, Inc., 229
F.3d 1120, 1121 (Fed .Cir. 2000) and ASR, 127 S.Ct.
at 1740 (“a combination of elements ‘must do more
than yield a predictable result’; combining elements
that work together ‘in an unexpected and fruitful
manner’ would not have been obvious”).

The ultimate determination of whether an
invention would have been obvious is a legal
conclusion based on underlying findings of fact. Jn re
Dembiczak, 175 F.3d 994, 998 (Fed. Cir. 1999).

83a
C. Analysis of the Asserted Claims

1. Claim 1

SMC argues that Norgren’s expert admitted that
the only difference between SMC’s 1984 connector
and claim 1 of the ‘392 patent is that Norgren’s
claimed connector includes a pivotally mounted side
or hinge so that there are no loose parts. SMC argues
that it would have been obvious to use a hinge if one
were concerned about having loose parts, and in fact
the prior art Palatchy patent specifically disclosed a
circular flange connector in which one of the halves
was connected to the other half with a hinge for ease
of closing and thus had no loose parts. Further, SMC
argues, there was nothing new about Norgren’s
connector adapted to receive a ported rectangular
flange because prior art such as the Abbes patent was
adapted to receive a circular flange with a clamp, and
the use of a rectangular shape would have simply
been a design choice to one of ordinary skill.24 It is
argued that even the use of a hinge such as that
disclosed in Palatchy would have been merely a
design choice. See SMC Br. at 38-42. As stated
above, these arguments are rejected by Norgren and
the Staff.

It must observed that Norgren’s expert did, in
fact, admit during his deposition that the only

24 SMC argues that inasmuch as Norgren has argued that the
definition of a rectangular ported flange and a rectangular
clamp are so broad that SMC connector infringes, only the use of
a hinged mount with no loose parts is genuinely at issue. See
SMC Br. at 40 (citing Evans Cooling Sys., Inc. v. General Motors
Corp., 125 F.3d 1448 (Fed. Cir. 1997)).

84a

difference between prior art such as the old SMC
connector and the claimed invention of the ‘392
patent is the fact that one side of the clamp pivots.
At the hearing, it was impossible for him to distance
himself from that prior testimony. See Wiskamp Tr.
331-343. Indeed, he had little choice but to make this
admission in view of the fact that by the time of the
hearing Norgren’s proposed construction of the term
“generally rectangular ported flange,” and the four-
side clamp limitation (including the “adapted” nature
of the clamp) had become extremely broad so as to
capture the accused SMC devices. As argued by
SMC, it would, therefore, be permissible to look only
to the “pivotally mounted” limitation of claim 1 to
determine whether or not the claim is valid. Indeed,
if Norgren’s broad interpretation of claim 1 were
adopted as the proper construction of the claim there
would be no choice but to do so. However, when the
claim is properly construed to be more limited, as
detailed above in the section on claim construction,
the record does not contain clear and convincing
evidence of obviousness.

The Palatchy patent discloses circular pipe
couplings formed from segments that provide a
circular housing which encircle and connect pipes
together. RX-27, col. 1, ll. 5-7. In particular, the
Palatchy inventors provide that the segments that
form the pipe couplings are “hingedly interconnected
together so that the plumber may position and hold
one segment upon the pipes to be coupled and the
remaining segments may simply be hung beneath
that one segment in position and ready to be pivoted
into coupling position when the plumber is ready.”
RX-27, col. 2, ll. 18-24. SMC’s expert also confirmed

85a

that Palatchy discloses a clamp with a hinge-like
connection capable of pivoting. See Trumper Tr. 617-
618.

The Abbes and Yamazaki patents (and the old
SMC connector) disclose different shaped clamps.
Specifically, Abbes discloses a circular-shaped clamp
consisting of semi-circular halves that are connected
together by two bolts. The Abbes clamp connects to a
circular shaped flange. Tramper Tr. 616-617.
Yamazaki, or the SMC old-style connector, is a
generally rectangular-shaped clamp that connects to
mounting ears. See Wiskamp Tr. 338-339; RPX-1.

It might be tempting to suggest that one skilled
in the art would have modified Abbes in view of
Palatchy to arrive at the connecting structure of
claim 1. Yet, both of those references were before the
examiner during prosecution, and claim 1 was
amended specifically to avoid the prior art. Further,
none of the prior art that SMC has identified
discloses a four-sided generally rectangular clamp
that is adapted to engage a generally rectangular
ported flange. Abbes, Yamazaki and the old SMC
relate to clamps adapted to engage mounting ears or
a circular flange. The claimed invention of the ‘392
patent is not merely a combination of old elements.

Nor is there evidence as to why one skilled in the
art would have made modifications in view of the
prior art to arrive at the claimed invention. Yet,
under ASR, a party claiming obviousness must still
“identify a reason that would have prompted a person
of ordinary skill in the relevant field to combine the
elements in a way the claimed new invention does.”

86a

See KSR, 127 S.Ct. at 1741; PharmaStem, 491 F.3d
at 1360. In particular, SMC’s expert testimony failed
to establish that generally rectangular ported flanges
were known in the art at the time of the invention, or
that one skilled in the art would have had a reason to
modify the prior art connectors so that they were
adapted to fit such flanges. Nor does the record
explain how one of ordinary skill would have
integrated a pivoting side into the clamp design. See,
e.g., Trumper Tr. 618-619. Asserting that such
structures would have been design choices fails to
explain how such choices would have been made, the
ease with which they would have been executed, and
the expectations that one might have had in
implementing such _ designs. Perhaps more
importantly, the record evidence does not explain
why one would have chosen to combine the elements
at issue from all of the other design choices that were
available in 1993.

Accordingly, it has not been shown by clear and
convincing evidence that claim 1 would have been
obvious.

2. The Dependent Asserted Claims 2-5, 7 and 9

SMC argues that during the hearing Norgren
“did not assert that there was anything unique or
unobvious with respect to the subject matter of the
asserted dependent claims.” For each asserted
dependent claim, SMC provides a brief citation to the
testimony of its expert that the dependent claims
would in fact have been obvious to one of ordinary

skill in 1993. See SMC Br. at 41-42.

87a

The Staff argues that the dependent asserted
claims, when correctly construed, are not invalid due
to obviousness for the same reasons that claim 1 has
not been shown to be invalid. See Staff Br. at 38-39.

Norgren denies that under any party’s proposed
construction, the asserted claims are not invalid due
to obviousness. Norgren’s briefs do not, however,
point to any reason why the added limitations of the
dependent claims would preserve their validity even
if claim 1 were found to have been obvious. See
Norgren Br. at 38-44; Norgren Reply Br. at 16-27.

Indeed, this Tribunal is aware of no reason why
the added limitations of claims 2-5, 7 and 9 would
prevent them from being found to be invalid if claim 1
were found to be have been obvious (obviousness
being the only basis for invalidity argued by any
party). Thus, if claim 1 were found to be obvious, all
of the asserted dependent claims should similarly be
found invalid. That is not, however, the case.
Inasmuch as claim 1 has not been found to be
* obvious, there is no basis for finding any of the
asserted dependent claims to be invalid.

3. Secondary Considerations

As indicated above, one of the Graham factors
which must be considered in an obviousness analysis,
is “objective evidence of nonobviousness,” also called
“secondary considerations. See Stratoflex, Inc. v.
Aeroquip Corp., 713 F.2d 1530, 1536 (Fed. Cir. 1983)
(“Thus evidence arising out of the so-called ‘secondary
considerations’ must always when present. be
considered en route to a determination of

88a

obviousness.”). However, secondary considerations,
such as commercial success, will not always dislodge
a determination of obviousness based on analysis of
the prior art. See KSR Int, 127 S.Ct. at 1745
(commercial success did not alter conclusion of
obviousness).

Secondary considerations did not constitute a
major portion of Norgren’s case, and indeed Norgren
devotes approximately one page of its post-hearing
brief to the topic. Nevertheless, Norgren argues that
secondary considerations support a finding that the
claims are valid. Norgren argues that its technical
expert, Wiskamp knew people who worked with FRLs
and were “amazed that a clamp with a pivoting side
actually worked under the pressure” that exists in a
typical compressed air system. Further, Norgren
argues that the market had long expressed a need to
have an FRL connector that allowed for ready
installation or removal of an air-compressed unit
hooked up to an assembly line in a busy factory and
in a place that was difficult to access. It is argued
that the prior art cited by SMC from the 1980s shows
that others had failed for a decade before the ‘392
patent issued to solve the problem. Finally, Norgren
argues that the claimed invention has been copied by
SMC and another company in China. See Norgren
Br. at 42-43 (citing Wiskamp Tr. 244-249, 253-254
and CPFF 9.18 - 9.20, 9.24).25

> Norgren’s reply brief also addresses secondary considerations,
and relies in part of settlements reached with other
manufacturers of connectors accused of infringement. That
portion of the Norgren’s reply was the subject of a joint motion

89a

There is no reason to doubt the veracity of Mr.
Wiskamp’s recollection concerning the reception that
Norgren’s quick clamp received when it came on the
market. The products appear at least in his
experience to have been generally well-received. His
testimony is, however, exceptionally brief, lacking in
detail, and without substantial support elsewhere in
record evidence. Thus, it is entitled to little weight.

The evidence concerning copying is even more
scant, and it is questionable from both legal and
factual perspectives. There is virtually no evidence of
copying by one or more Chinese companies.
Furthermore, as detailed in this decision, the SMC
connector does not infringe any asserted claim of the
‘392 patent, and even if it did, that would not
automatically prove that SMC copied Norgren’s

to strike (Motion No. 587-21) filed by SMC and the Staff. That
motion was denied. See Order No. 14.

A settlement is often the product of many factors. Thus,
settlements are generally of little probative value when
assessing the strength of a secondary consideration. See
Certain Plastic Molding Machines, \nv. No. 337-TA-462,
Comm’n Op. at 20°21 (Apr. 2, 2003); Fed.R.Evid. 408 (1972
Advisory Committee Notes). Furthermore, Norgren chose not to
offer the settlement papers as exhibits in the evidentiary record.
The settlements at issue (which were based on consent order
stipulations filed before the Commission) are in the overall
record of this investigation because they were filed in connection
with a motion to terminate. However, the specific royalty
information referred to in Norgren’s reply brief does not appear
to be contained in any settlement document filed with the
Commission Secretary. See Order No. 7 (Initial Determination),
Motion No. 587-8 (Attachments). Nor has Norgren pointed out
where such information is to be found. Consequently, the
royalty argument set forth by Norgren is accorded no weight.

90a

patent. See lron Grip Barbell Co., Inc. v. York
Barbell Co., Inc., 392 F.3d 1317, 1325 (Fed. Cir.
2005)(“Not every competing product that arguably
falls within the scope of the patent is evidence of
copying. Otherwise every infringement suit would
automatically confirm the nonobviousness of the
patent. Rather, copying requires the replication of a
specific product.”).

The asserted claims of the ‘392 patent, when
properly construed, have not been found invalid due
to obviousness. In the event that the prior art would
have otherwise rendered the claims obvious,
secondary considerations, or objective indicia of
nonobviousness, would have provided little support
for the validity of the claims.

VI. D USTRY

As stated in the notice of investigation, a
determination must be made as to whether an
industry in the United States exists as required by
subsection (a)(2) of section 337. Section 337 declares
unlawful the importation, the sale for importation or
the sale in the United States after importation of
articles that infringe a valid and enforceable U.S.
patent only if an industry in the United States,
relating to articles protected by the patent
concerned, exists or is in the process of being
established. There is no requirement that the
domestic industry be based on the same claim or
claims alleged to be infringed. 19 U.S.C. § 1337(a)(2).

The domestic industry requirement consists of
both an economic prong (ie, there must be an

9la

industry in the United States) and a technical prong
(i.e., that industry must relate to articles protected by
the patent at issue). See Certain Ammonium
Octamolybdate Isomers, Inv. No. 337-TA-477,
Comm’n Op. at 55, USITC Pub. 3668 (WJan. 2004).
The complainant bears the burden of proving the
existence of a domestic industry. Certain Methods of
Making Carbonated Candy Products, Inv. No. 337-
TA-292, Comm'n Op. at 34°35, USITC Pub. 2390
(June 1991).

Thus, in this investigation it must be shown by
Norgren that it satisfies both the technical and
economic prongs of the domestic industry
requirement with respect to the ‘112 patent. As
noted, and as explained below, it is found that these
domestic industry requirements have been satisfied.?6

A. Technical Analysis

During the hearing, Norgren presented
illustrations depicting its Quik Clamp products, upon
which it relies for its domestic industry argument. In
one of the illustrations, most of the Norgren product
is highlighted to contrast it with a wall mount
bracket that is not alleged to be covered by the ‘392
patent. See Wiskamp Tr. 292-295. In another
illustration, Norgren highlighted a portion of its

°° SMC additionally argues that an owner of a U.S. patent “can
bring a complaint” only if the domestic industry requirement is
satisfied. See SMC Br. at 43. Further, SMC argues that
“Norgren lacks standing in the Investigation because a domestic
industry does not exist for the asserted ‘392 patent.” See Id. at
59. Given the finding of this Tribunal that a domestic industry
does in fact exist, there arguments need not be addressed here.

92a

product to show that it has a pivotally mounted side.
SMC reproduced these illustrations in its brief, and
they are copied below.

i

if!
:

cls
it i
tl fi

|

CDX-7 (highlights in original).

Norgren has adduced uncontested evidence that
its currently manufactured quick clamps practice at
least claim 1 of the ‘392 patent. See Staff Br. at 43;
Norgren Br. at 44; SMC Br. at 43-44.27

Consequently, it is found that the technical prong
of the domestic industry requirement is satisfied.

”7

SMC argues without legal citation that inasmuch as it
believes that the asserted claims are invalid, “Norgren’s
domestic industry case must fail even if claim 1 does, in fact,
cover Norgren’s Quikclamp.” SMC Br. at 44. As discussed in
detail in the section V of this Initial Determination, patent
invalidity may constitute an affirmative defense to an allegation
of patent infringement. However, this Tribunal is aware of no
law to the effect that patent invalidity constitutes an affirmative
defense to a complainant’s allegation that a domestic industry
exists. In any event, this SMC argument is vague and otherwise
unsupported, and is, therefore, not adopted.

93a

B. Economic Analysis

The economic prong of the domestic industry
requirement is defined in subsection 337(a)(3) as
follows:

(3) For purposes of paragraph (2), an
industry in the United States shall be
considered to exist if there is in the United
States, with respect to the articles protected
by the patent, copyright, trademark or
mask work concerned -

(A) significant investment in plant and
equipment;

(B) significant employment of labor or
capital; or

(C) substantial investment in __ its
exploitation, including engineering,
research and development, or
licensing.

19 U.S.C. § 1837(a)(8).

The economic prong of the domestic industry
requirement is satisfied by meeting the criteria of any
one of the three factors listed above.

Norgren argues that it satisfies the economic
prong of the domestic industry requirement, and that
it has established numerous “expenditures and
employments in the United States for the Excelon
Series of FRLs that includes the Norgren Quik
Clamp.” Norgren argues that an industry exists even

94a

it must be based on only the Quik Clamp connector.
Norgren Br. at 46-52.

SMC argues that inasmuch as Norgren imports
or purchases all of its Quik Clamps, and does not
manufacturer the article exploited by the patent in
the United States, its claim of a domestic industry
must be closely scrutinized. SMC further argues that
Norgren has not established that a domestic industry
exists with respect to the Quik Clamp. SMC Br. at
44-57.

The Staff concurs with SMC that only Norgren’s
connector should be included in its economic base.
Nevertheless, the Staff argues that the existence of a
domestic industry has been established. Staff Br. at
44-49,

As detailed above in this Initial Determination, it
has not been shown that the ‘392 patent covers
anything other than a connector. It does not cover
the attached FRLs. In addition, Norgren sells its
Quik Clamp connectors in combination with FRLs, as
well as and individually. In fact, the majority of its
connectors are sold alone. Perry Tr. 182; Pusatari Tr.
554. Thus, the Norgren connector is the actual
article of commerce at issue, and should form the
basis of the economic analysis. See Certain Modular
Structural Systems and Components Thereof Inv.
No. 337-164, USITC Pub. 1668 (1984); see also
Certain Double-Sided Floppy Disk Drives and
Components Thereof Initial Determination, Inv. No.
337- 215, 1986 ITC LEXIS 300, pages 77-82 (in this

95a

instance, the connectors and FRLs do not form a
single unit).28

On balance, the evidence of record demonstrates
the existence of a domestic industry under the
economic prong of 19 U.S.C. § 1337(a)(3)(C) Ge,
substantial investment in exploitation, including
engineering, research and development, or licensing).

First, it must be acknowledged that Norgren’s
Quik Clamp manufacturing activities have been
carried out in Mexico since 2004. Pomaranski Tr.
130. Despite this fact, Norgren provides engineering
support services specifically for the Quik Clamp at its
Littleton, Colorado facility, separate and apart from
the engineering support services for its Excelon
product line. For example, Norgren inspects parts
that are made overseas, and also continues to conduct
manufacturing and design engineering for its
connectors. These activities include customer
support such as determining the best configuration
for the Quik Clamp and FRL units based on client
needs, quality inspection, qualifying vendors,
retooling manufacturing equipment, and quality
control. Robertson Tr. 47-48, 84-88; CX-32.

Norgren confidential information redacted

28 There is no binding precedent that requires Norgren to
present a “value-added” comparison between its domestic and
foreign activities. See Certain Male Prophylactic Devices, Inv.
No. 337-546, Comm’n Op. at 43 n.15 (June 29, 2007).

96a

Consequently, Norgren has satisfied both the
technical and economic prongs of the domestic
industry requirement.

Vil. CONCLUSIONS OF LAW

1. The Commission has personal jurisdiction over
the parties, and subject-matter jurisdiction over the
accused products.

2.The importation or sale requirement of section
337 is satisfied.

3.It is not found that the accused devices
infringe any asserted claim of the ‘392 patent literally
or under the doctrine of equivalents.

4.It has not been shown by clear and convincing
evidence that the asserted claims are invalid due to
obviousness when they are properly construed.

5.A domestic industry exists, as required by
section 337.

6.It has not been established that a violation
exists of section 337.

VUI. INITIAL DETERMINATION AND ORDER

Based on the foregoing, it is the INITIAL
DETERMINATION (“ID”) of this Tribunal that no
violation of section 337 of the Tariff Act of 1930, as
amended, has occurred in the importation into the
United States, the sale for importation, or the sale

97a

within the United States after importation of certain
connecting devices (“Quick-Clamps”) for use with
modular compressed air conditioning units, including
filters, regulators, and lubricators (“FRL’s”) that are
part of larger pneumatic systems and the FRL units
they connect by reason of infringement of one or more
of claims 1 through 9 of United States Patent No.
5,372,392.

Further, this Jnitial Determination, together
with the record of the hearing in this investigation
consisting of:

(1) the transcript of the hearing, with
appropriate corrections as may hereafter be ordered,
and

(2) the exhibits received into evidence in
this investigation, as listed in the attached exhibit
lists, is CERTIFIED to the Commission.

In accordance with 19 C.F.R. § 210.39(c), all
material found to be confidential by the undersigned
under 19 C.F.R. § 210.5 is to be given in camera
treatment.

The Secretary shall serve a public version of this
ID upon all parties of record and the confidential
version upon counsel who are signatories to the
Protective Order (Order No. 1) issued in this
investigation, and upon the Commission investigative
attorney.

To expedite service of the public version, each
party is hereby ORDERED to file with the
Commission Secretary by no later than February 20,

98a

2008, a copy of this ID with brackets that show any
portion considered by the party (or its suppliers of
information) to be confidential, accompanied by a list
indicating each page on which such a bracket is to be
found. At least one copy of such a filing shall be
served upon the Administrative Law Judge, and the
brackets shall be marked in red. If a party (and its
suppliers of information) considers nothing in the ID)
to be confidential, and thus makes no request that
any portion be redacted from the public version of
this ID, then a statement to that effect shall be filed
in lieu of a document with brackets.

Pursuant to 19 C.F.R. § 210.42(h), this Initial
Determination shall become the determination of the
Commission unless a party files a petition for review
pursuant to § 210.43(a) or the Commission, pursuant
to § 210.44, orders on its own motion a review of the
ID or certain issues herein.

Carl C. Charneski
Administrative Law Judge

Issued: February 13, 2008

99a
Appendix D

United States Court of Appeals
for the Federal Circuit

2008-1415
NORGREN INC.,
Appellant,
v.
INTERNATIONAL TRADE COMMISSION,
Appellee,

and

SMC CORPORATION and
SMC CORPORATION OF AMERICA,

Intervenors.

On appeal from the United States International
Trade Commission in Investigation No. 337-TA-587.

ORDER

100a
NOTE: This order is nonprecedential.

United States Court of Appeals
for the Federal Circuit

ORDER

A petition for rehearing en banc having been
filed by the Intervenors, and the matter having first
been referred as a petition for rehearing to the panel
that heard the appeal, and thereafter the petition for
rehearing en banc 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, DENIED.

The mandate of the court will issue on August
28, 2009.

FOR THE COURT,

Jan Horbaly
Clerk
Dated: 08/21/2009

cc: Carl F. Manthei
Mark B. Rees, Arthur I. Neustadt

NORGREN INC V ITC, 2008-1415
(ITC - 337-TA: 587)

10la
Appendix E

No. 06-1291

IN THE
Supreme Court of the United States

AMGEN, INC.,
Petitioner,
Vv.
HOECHST MARION ROUSSEL, INC.

(now known as AVENTIS PHARMACEUTICALS INC.) and
TRANSKARYOTIC THERAPIES, INC. (now known as
SHIRE HUMAN GENETIC THERAPIES, INC.),

Respondents.

On Petition for Writ of Certiorari to the
United States Court of Appeals
For the Federal Circuit

BRIEF OF THE AMERICAN BAR ASSOCIATION
AS AMICUS CURIAE SUPPORTING PETITIONER

Of Counsel KAREN J. MATHIS*

President
JOSEPH M. POTENZA American Bar Association
PAUL M. RIVARD 321 N. Clark St.

Chicago, IL 60610
(312) 988-5000

*Counsel of Record

Counsel for Amicus Curiae

*Table of Contents and Table of Authorities omitted
for printing

102a
INTEREST OF THE AMICUS CURIAE!

The American Bar Association (“ABA”), with
more than 413,000 members, is the leading national
organization of the legal profession. Its members
come from each of the fifty states, the District of
Columbia, and the U.S. territories. Membership is
voluntary and includes attorneys in private practice,
government service, corporate law departments, and
public interest organizations, as well as legislators,
law professors, law students, and non-lawyer
associates in related fields. ABA members represent
the full spectrum of public and private litigants,
including plaintiffs and defendants.

The ABA’s Section of Intellectual Property Law
(“Section”) is the world’s largest organization of
intellectual property professionals, with
approximately 19,000 members including lawyers,
associates, and law students. In recognition of the
importance of patent law, the ABA established the
Section in 1894 as the first ABA section to deal with a

1 Pursuant to Rule 37.6, amicus curiae certifies that no counsel
for a party authored this brief in whole or in part and that no
person or entity, other than amicus, its members, or its counsel,
has made a monetary contribution to the preparation or
submission of this brief. The parties have consented to the filing
of this brief.

Neither this brief nor the decision to file it should be interpreted
to reflect the views of any judicial member of the American Bar
Association. No inference should be drawn that any member of
the Judicial Division Council has participated in the adoption or
endorsement of the positions in this brief. This brief was not
circulated to any member of the Judicial Division Council prior
to filing.

103a

special branch of the law. The Section has
contributed significantly to the development of the
American system for the protection of intellectual
property rights. The Section is composed of lawyers
of diverse backgrounds who represent patent owners,
accused infringers, individual inventors, large and
small corporations, universities and _ research
institutions, all across a wide range of technologies
and industries.

At its 2004 Annual Meeting, the ABA House of
Delegates adopted a policy that supports appellate
review under the de novo standard of the ultimate
issue of claim construction but which reserves
appellate review under the clearly’ erroneous
standard of any underlying findings of fact made by a
trial court in connection with construing a claim
term.?, The ABA developed this policy based on its
belief

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386017_1082%3A1. Public record. Not legal advice.