Lydall Thermal/acoustical, Inc. v. Federal-Mogul, Corp. , 344 F. App'x 607 ( 2009 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit
2009-1135
LYDALL THERMAL/ACOUSTICAL, INC.,
LYDALL THERMAL/ACOUSTICAL SALES, LLC, and LYDALL, INC.,
Plaintiffs-Appellants,
v.
FEDERAL-MOGUL CORPORATION
and FEDERAL-MOGUL POWERTRAIN, INC.,
Defendants-Appellees.
Timothy C. Meece, Banner & Witcoff, Ltd., of Chicago, Illinois, argued for
plaintiffs-appellants. With him on the brief were Janice V. Mitrius and Aimee B. Kolz, of
Chicago, Illinois, and Bradley C. Wright, of Washington, DC.
John A. Artz, Dickinson Wright, PLLC, of Bloomfield Hills, Michigan, argued for
defendants-appellees. With him on the brief was Robert L. Kelly. Of counsel was
John S. Artz.
Appealed from: United States District Court for the Eastern District of Michigan
Senior Judge Avern C. Cohn
NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit
2009-1135
LYDALL THERMAL/ACOUSTICAL, INC.,
LYDALL THERMAL/ACOUSTICAL SALES, LLC, and LYDALL, INC.,
Plaintiffs-Appellants,
v.
FEDERAL-MOGUL CORPORATION
and FEDERAL-MOGUL POWERTRAIN, INC.,
Defendants-Appellees.
Appeal from the United States District Court for the Eastern District of
Michigan in Case No. 07-CV-12473, Senior Judge Avern C. Cohn.
____________________________
DECIDED: September 8, 2009
____________________________
Before LOURIE, RADER, and PROST, Circuit Judges.
LOURIE, Circuit Judge.
Lydall Thermal/Acoustical, Inc., Lydall Thermal/Acoustical Sales, LLC, and
Lydall, Inc. (collectively, “Lydall”) appeal from the U.S. District Court for the Eastern
District of Michigan’s final judgment of noninfringement. Lydall Thermal/Acoustical, Inc.
v. Federal Mogul Corp., No. 07-cv-12473 (E.D. Mich. Nov. 19, 2008) (Dkt. No. 55). The
final judgment was entered pursuant to a stipulation by the parties that allowed Lydall to
appeal the district court’s claim constructions of any of thirteen terms. Lydall
Thermal/Acoustical, Inc. v. Federal Mogul Corp., No. 07-cv-12475 (E.D. Mich. Nov. 17,
2008) (Dkt. No. 53) (“Stipulated Order”); Lydall Thermal/Acoustical, Inc. v. Federal
Mogul Corp., 566 F. Supp. 2d 602 (E.D. Mich. 2008) (”Claim Construction Opinion”).
Lydall has appealed the construction of two terms: “fibrous batt of fibers” and “tufts of
fibers.” Because we agree with the district court’s claim construction for both terms, we
affirm.
BACKGROUND
Lydall owns U.S. Patents 6,092,622 (“the ’622 patent”) and RE 39,260 (“the ’260
patent”). The ’260 patent is a continuation-in-part of U.S. Patent Application 09/033,852
(“the ’852 application”), which issued as the ’622 patent. The specifications of the ’622
patent and the ’260 patent are the same for the purposes of this appeal. Lydall selected
claim 45 of the ’260 patent, which was one of the claims added in the reissue
application, as the paradigm claim for both patents in the district court. Accordingly, we
will refer only to the ’260 patent in this opinion.
The ’260 patent is directed to flexible insulating shields that can be used for
thermal and acoustic insulation. The shields include a fibrous batt of fibers oriented in a
horizontal X-Y plane, as illustrated in figure 2 of the ’260 patent.
The specification of the ’260 patent describes “the present invention” as including
“a needled, flexible, fibrous batt having an insulating layer of insulating fibers disposed
between opposite binding layers of binding fibers.” ’260 patent col.6 ll.53–55. This
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description of the batt of the invention as composed of three layers is repeated
throughout the specification. See id. col.9 ll.21–25 (“[T]he present insulation batt,
generally, also has organic fiber layers which function as binding layers. An insulating
layer of insulating fibers is disposed between opposite binding layers of binding fibers.”)
(reference numbers removed); id. col.13 ll.19–23 (“To produce the present shield, a
flexible fibrous batt of an insulating layer of insulating fibers is disposed between
opposite carded binding layers of binding fibers.”). The patent further specifies that
The insulating fibers preferably will be any of the usual inorganic fibers,
such as glass fibers, mineral fibers, alumina fibers and the like, but, more
usually, the insulating fibers are glass fibers. However, where the
requirement for thermal insulation is lower and the requirement for
acoustical insulation is higher, the insulating fibers need not be inorganic
fibers and may be, at least in part, organic fibers, such as polyester fibers,
nylon fibers and the like. . . .
The binding fibers are normally organic fibers, such as polyester fibers,
nylon fibers, olefin fibers, and cellulose acetate fibers.
Id. col.11 ll.1–13. Thus, the patent describes the batt as having three layers, an
insulating layer disposed between two binding layers, with the composition of the layers
being variable according to particular insulating needs.
The strength of the batt in the Z-direction is central to the invention. See ’260
patent col.4 ll.30–35 (discussing how to obtain the high Z-directional strength disclosed
in the ’852 application). The specification states that the batt is “needled,” i.e.,
penetrated with a barbed needle. As described, needling a fibrous batt pulls some
fibers from the binding layer nearest the needle entry point through the insulating layer
and then through the far binding layer to create “stitches” oriented in the Z-direction.
Because the needle penetrates through the surface of the opposite binding layer from
the needle’s entry point, the ends of the stitches protrude in a “tuft” on the opposite
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surface of the batt from the needle’s entry point. The tuft remains on the surface of the
batt when the needle is withdrawn from the same side as it entered the batt. See id.col.12 ll.53–col.13 ll.13. Figure 10 of the ’260 patent illustrates a single needle at
various stages of the needling technique and the creation of tufts, indicated by
reference number 46.
The specification describes the tufts created by the needling as forming on the
opposite side of the needle entry. See ’260 patent col.6 ll.55–59 (“Binding fibers of
each binding layer are needledly disposed through the insulating layer and an opposite
binding layer to provide tufts of binding fibers protruding from that opposite binding
layer.”); id. col.9 ll.25–29 (same); id. col.13 ll.27–31 (same); id. col.12 ll.62–64 (“As the
needle is withdrawn back through [upper] binding layer, that tuft remains at the tufted
lower surface.”) (reference numbers removed); id. col.13 ll.7–13 (“To achieve the tufted
surfaces, at least the lowermost barb of any needle should pass through the tufted
lower surface or tufted upper surface, depending upon the needle direction, sufficiently
such that the tufted fibers remain on the respective surface when the needle is
withdrawn from the batt.”) (reference numbers removed). The specification also
describes the batt as having tufts on both the upper and lower surfaces. See id. col.6
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ll.59–60 (“This forms a tufted upper surface and a tufted lower surface of the batt.”); id.col.9 ll.29–30 (describing the needling “so as to form a tufted upper surface and a tufted
lower surface of insulation batt”) (reference numbers removed); id. col.13 ll.30–31
(same); id. col.13 ll.3-6 (“By using conventional needling machines, where needling is
conducted from both sides of batt, tufts will be disposed on both the tufted upper
surface and the tufted lower surface.”) (reference numbers removed).
After the batt is needled, a flexible adhesive is applied to the tufted upper and
lower surfaces of the batt. The adhesive locks the tufts and thus the stitches in place,
thereby increasing Z-directional strength. See ’260 patent col.9 ll.43–ll.60. A flexible
piece of foil can be placed on top of the adhesive to provide further Z-directional
strength and to prevent the adhesive from inadvertently sticking to a surface. See id.col.9 ll.61–col.10 ll.25. Figure 5 depicts the binding layers (41 and 42), the insulating
layer (43), the stitches (34), the tufts (46), the adhesive (50), and the foil (51).
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Paradigm claim 45 of the ’260 patent reads as follows, with emphases on the
disputed claim terms:
A flexible, adhesively attachable, thermal and acoustical insulating shield,
comprising:
(1) a needled, flexible, fibrous batt (40) of fibers (44, 45), some of the
fibers (45) located at a bottom portion of the batt (40) and a top
portion of the batt (40) being needledly disposed through the batt
(40) to provide tufts (46) of fibers (45) protruding from the fibrous
batt (40) so as to form a tufted upper surface (47) and a tufted
lower surface (48) of the batt (40);
(2) a flexible adhesive (50), disposed and adhered substantially over
the tufted upper surface (47) such that the tufts (46) on the upper
surface (47, 48) are secured 45 to that surface by the adhesive
(50); and
(3) a flexible, protective foil (51) permanently adhered to the lower
surface (48) of the batt; and
wherein the shield may be flexed and pressed to configure and
permanently attach the tufted upper surface (47) to 50 an object (1)
to be shielded.
’260 patent, claim 45 (emphases added).
Federal-Mogul Corporation and Federal-Mogul Powertrain, Inc. (“Federal-Mogul”)
produces the ReflectShield 1440™, which is an insulating fibrous batt. According to a
stipulation by the parties, the ReflectShield 1440™ has the following characteristics: (1)
a layered structure of foil, nonwoven fibrous batt, and adhesive (the foil being adhered
to the nonwoven fibrous batt), in that order; (2) in which the nonwoven fibrous batt is
needled from only one side of the batt; and (3) in which the fibrous batt of fibers is
formed of a homogenous material. See Stipulated Order, No. 07-cv-12473, slip op. at
1.
On January 24, 2007, Federal-Mogul filed an action against Lydall for a
declaratory judgment of noninfringement, invalidity, and unenforceability of the ’622 and
’260 patents. On June 8, 2007, Lydall sued Federal-Mogul for infringement of the
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patents. The two cases were consolidated. After Lydall designated claim 45 for the
purposes of claim construction, the district court conducted a technology tutorial and a
Markman hearing.
On July 3, 2008, the district court issued its claim construction decision. The
court construed “fibrous batt of fibers” as “a composite batt having a layer of insulating
fibers sandwiched between layers of binding fibers.” Claim Construction Opinion, 566
F. Supp. 2d at 615. The court stated that “there is not a hint in the specification that the
batt can be a single homogenous layer.” Id. at 613. The court found that because the
specification consistently described the batt as having an insulting layer sandwiched
between binding layers, the patent disclosed a single embodiment of the batt, i.e., a batt
with those three layers. The court then construed “tufts of fibers” as “clusters of binding
fibers which have been intentionally needle-punched on a downstroke and which extend
beyond an opposite surface of the batt.” ∗ Id. at 617. The court found that the
specification and the drawings made clear that “tufts” had to extend beyond the exit or
second side of the needle and that the patent made no mention of a tuft appearing on
the entry or first side of the needle.
On November 17, 2008, the parties stipulated that under the district court’s claim
constructions, Federal-Mogul’s ReflectShield 1440™ did not infringe the ’622 and ’260
patents, subject to appeal. A decision negating either of the appealed constructions
would negate the stipulation. See Stipulated Order, No. 07-cv-12473, slip op. at 2.
∗
The court used a slightly different construction in Exhibit A of its Claim
Construction Opinion, construing “tufts of fibers” as “a cluster of binding fibers which
have been needled-punched on the forward stroke and which extend beyond the
opposite surface of the batt.” For the purposes of this appeal, the differences between
the two constructions are irrelevant.
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On December 12, 2008, Lydall filed a timely appeal. We have jurisdiction
pursuant to 28 U.S.C. § 1295(a)(1).
DISCUSSION
We review claim construction de novo on appeal. Cybor Corp. v. FAS Techs.,
Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc). We begin a claim construction
analysis by considering the language of the claims themselves. See Phillips v. AWH
Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc). However, “claims must be read
in view of the specification, of which they are a part.” Id. at 1315 (quotation marks
omitted). The specification is the “single best guide to the meaning of a disputed term.”
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996); see Phillips,
415 F.3d at 1315 (“The specification is, thus, the primary basis for construing the
claims.”) (citation omitted). A court should also consider the patent’s prosecution
history, Phillips, 415 F.3d at 1317, and may rely on dictionary definitions, “so long as the
dictionary definition does not contradict any definition found in or ascertained by a
reading of the patent documents,” id. at 1322–23.
A. Fibrous batt of fibers
With regard to the term “fibrous batt of fibers,” Lydall argues that the district court
incorrectly believed that there was only one embodiment disclosed in the ’260 patent.
In making this error, Lydall contends, the district court applied its own Honeywell
decision instead of following our decision in Phillips. Lydall asserts that the claim
language is clear and unambiguous and does not suggest that the batt must be layered.
Lydall argues that, in addition to describing the claimed invention, the specification uses
the term “fibrous batt” to describe the prior art, which included single-layer batts. Lydall
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contends that the specification expressly teaches that organic fibers may be used
throughout the batt and that the binding fibers and the insulating fibers can be made of
the same material, thus indicating that the term “fibrous batt of fibers” includes a
homogenous batt made of one material. Lydall asserts that the specification expressly
states that the drawing reference numerals used in the claims are not meant to be
limitations and that the file history expressly indicates the same. Lydall also argues that
the prosecution history indicates that the inventors intended to cover a homogenous
batt in claim 1, which uses the same language as claim 45. Finally, Lydall asserts that
claim differentiation of dependent claim 48, which includes a limitation for a three-layer,
non-homogenous batt, requires a presumption, which Lydall argues is unrebutted, that
claim 45 does not include such a limitation.
In response, Federal-Mogul argues that Lydall has failed to acknowledge that this
court upheld the district court’s decision, including its claim construction, in Honeywell
after we issued the Phillips decision. Federal-Mogul asserts that, as in Honeywell, the
’260 specification disclosed only one invention: a multi-layered composite batt of
fibrous materials with tufts of fibers formed on each side by two-sided needling.
Federal-Mogul contends that all references in the specification to “batt” describe an
insulating layer sandwiched between binding layers. Federal-Mogul argues that the
broadest configuration in the specification is an insulating layer that is “at least in part”
organic, but even that configuration, Federal-Mogul asserts, does not indicate that the
term “fibrous batt of fibers” encompasses a single-layer, homogenous batt of all organic
fibers. Federal-Mogul contends that Lydall cannot rely on its statements during the
reissue prosecution to expand the scope of the ’260 patent when the specification
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clearly limits the invention to a narrower scope. Finally, Federal-Mogul argues that
claim 45 has only one interpretation, so claim differentiation does not apply because the
written description and claims overcome the presumption of claim differentiation.
Regardless, Federal-Mogul asserts that claim 48 also contains other limitations that
distinguish it from claim 45.
We agree with Federal-Mogul that the specification of the ’260 patent discloses a
single embodiment of the invention, viz., an insulating shield that includes a fibrous batt
consisting of an insulating layer sandwiched between two binding layers that is, as
discussed infra, needled on two sides. Although Lydall is correct in saying that the
claim language “fibrous batt of fibers” does not, in isolation, suggest a layered batt,
Lydall’s arguments completely ignore the consistent use of the term “batt” in the
specification. It is fundamental that we give due weight to the specification when
construing this claim term. Phillips, 415 F.3d at 1315.
We have stated that “when the preferred embodiment is described in the
specification as the invention itself, the claims are not necessarily entitled to a scope
broader than that embodiment.” Chimie v. PPG Indus., 402 F.3d 1371, 1379 (Fed. Cir.
2005); see Honeywell, 452 F.3d at 1318 (construing claim term to include fuel filter
because “[o]n at least four occasions, the written description refers to the fuel filter as
‘this invention’ or ‘the present invention’”); SciMed, 242 F.3d at 1343 (construing term to
include feature characterized as “the present invention”). In other words, when a
patentee consistently describes one embodiment as “the present invention,” “[t]he public
is entitled to take the patentee at his word.” Honeywell, 452 F.3d at 1318; see also
SciMed, 242 F.3d at 1341 (“Where the specification makes clear that the invention does
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not include a particular feature, that feature is deemed to be outside the reach of the
claims of the patent, even though the language of the claims, read without reference to
the specification, might be considered broad enough to encompass the feature in
question.”). Such is the case here. The specification identifies a three-layered batt as
“the present invention.” ’260 patent col.6 ll.50. In addition, the specification repeatedly
describes the batt as having an insulating layer disposed between two binding layers.
See id. col.6 ll.53–55, col.9 ll.21–25, col.13 ll.19–23. Lydall’s consistent description of
“the present invention” as including a three-layered batt makes clear that the claimed
“fibrous batt of fibers” must have three layers, an insulating layer sandwiched between
two binding layers. The fact that the specification discloses that the insulating fibers
may “at least in part” be made up of the same organic fibers as the binding layers does
not dissuade us from our conclusion. It may be that the insulating layer and the binding
layers are made from the same material, but the batt still has three layers. It is not,
therefore, a single, homogenous layer.
We also agree with the district court that Lydall’s reliance on the prosecution
history and the doctrine of claim differentiation is unpersuasive. “Representations
during prosecution cannot enlarge the content of the specification.” Biogen, Inc. v.
Berlex Labs., Inc., 318 F.3d 1132, 1140 (Fed. Cir. 2003). Thus, when the prosecution
history appears in conflict with the specification, any ambiguity must be resolved in favor
of the specification. See id. The specification is the “best source for understanding a
technical term,” to be supplemented, “as needed, by the prosecution history.” Phillips,
415 F.3d at 1315 (quoting Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.2d 1473,
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1478 (Fed. Cir. 1998)). Here, the specification is clear. The sole embodiment of the
invention includes a batt that has three layers.
The patentee’s efforts during the prosecution of the reissue patent to enlarge the
claims beyond what the specification discloses also must fail. Similarly, Lydall cannot
rely on claim differentiation to expand the scope of the claim term. See Nystrom v. Trex
Co., 424 F.3d 1136, 1143 (Fed. Cir. 2005) (“[S]imply noting the difference in the use of
claim language does not end the matter. Different terms or phrases in separate claims
may be construed to cover the same subject matter where the written description and
prosecution history indicate that such a reading of the terms or phrases is proper.”). In
addition, as Federal-Mogul asserts, claim 48 can be differentiated from claim 45 by
other limitations. Thus, we conclude that the district court properly construed “fibrous
batt of fibers” as “a composite batt having a layer of insulating fibers sandwiched
between layers of binding fibers.”
B. Tufts of fibers
With regard to the second disputed claim construction, Lydall argues that the
parties and the district court agreed that “tufts of fibers” are clusters of fibers and thus
that the court should have given the term this ordinary and customary meaning. Lydall
asserts that nothing in the specification or prosecution history provided a special
meaning or definition that would override that ordinary meaning. Lydall also contends
that the specification shows various methods for needling a batt to produce tufts on the
surface, including a single-sided example shown in figure 10 that would still result in
tufts being present on both sides of the batt. Accordingly, Lydall argues that the court
incorrectly limited the claim to the two-sided needling shown in figure 5. Lydall argues
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that no textual hook in “tufts of fibers” justifies reading additional limitations to the term
from an example in the specification. According to Lydall, it does not matter how the
tufts were created as long as the batt is needled to produce them. Finally, Lydall
asserts that the court’s claim construction of “tufts of fibers” overlaps with other claim
constructions and renders them inconsistent.
In response, Federal-Mogul argues that Lydall’s assertion that an embodiment
where tufts are formed on both sides of a batt when a batt is needled from only one side
is not described or shown anywhere in the patent. Such a construction, according to
Federal-Mogul, contradicts the purpose of the tufts to strengthen the batt in the Z-
direction. Federal-Mogul contends that there is only one embodiment of the invention,
which uses two-sided needling. According to Federal-Mogul, figure 10 shows a single
barbed needle at various locations as it proceeds through a batt to produce a tuft.
Finally, Federal-Mogul argues that Lydall’s selective appeal and position for the two
claim constructions before us conflict with constructions of other claim terms.
We agree with Federal-Mogul that, as described in the ’260 patent, “tufts of
fibers” are only formed on the opposite side of a batt from a needle’s entry point and,
therefore, that the batts must undergo two-sided needling. Lydall is correct that the
parties agreed that the ordinary meaning of “tufts” is “clusters.” See Claim Construction
Opinion, 566 F. Supp. 2d at 616. However, although the construction of a claimed term
is usually controlled by its ordinary meaning, we will adopt an alternative meaning “if the
intrinsic evidence shows that the patentee distinguished that term from prior art on the
basis of a particular embodiment, expressly disclaimed subject matter, or described a
particular embodiment as important to the invention.” CCS Fitness, Inc. v. Brunswick
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Corp., 288 F.3d 1359, 1366–67 (Fed. Cir. 2002). Here, the specification clearly
describes a single embodiment as the invention, viz., an insulating shield that includes a
three-layered batt that undergoes two-sided needling to produce tufts on both its upper
and lower surfaces. Every time the specification discusses how to create the tufts of
fibers, it states that the tufts form on the opposite side of the needle’s entry point. See
’260 patent col.6 ll.55–59, col.9 ll.25–29, col.12 ll.62–64, col.13 ll.7–13, col.13 ll.27–31.
The description of figure 10 provides a detailed explanation of how the needling
accomplishes this:
The needling used in producing the present batt is illustrated in FIG. 10.
As a needle 100 having a barb 101 begins to penetrate binding layer 42,
the bar[b] 101 picks up and is essentially loaded with binding fibers 45 in
that barb. The needle then passes through insulating layer 43 without
picking up substantial insulating fibers since the barb is essentially loaded.
The needle then passes through the opposite binding layer 41 such that
the barb penetrates below the tufted lower surface 48 and presents a tuft
46 beyond that tufted lower surface 48. As the needle 100 is withdrawn
back through binding layer 41, that tuft 46 remains at the tufted lower
surface 48. Of course, during that needling operation, as is common with
barbed needles, binding fibers 45 will also be pulled with the needles to
form stitches 34 of those binding fibers, as shown in FIG. 5. Thus, with the
retraction of the needle 100, the tufts 46 which terminate the stitches 34 of
fibers 45 remain o[n] the surface. By using conventional needling
machines, where needling is conducted from both sides of batt 40, tufts
will be disposed on both the tufted upper surface 47 and the tufted lower 5
surface 48, as shown in FIG. 5.
To achieve the tufted surfaces, at least the lowermost barb of any needle
should pass through tufted lower surface 48 or tufted upper surface 47,
depending upon the needle direction, sufficiently such that the tufted fibers
remain on 10 the respective surface when the needle 100 is withdrawn
from the batt 40.
Id. col.12 ll.53–col.13 ll.13 (emphases added).
The specification identifies a batt with tufts on the upper and lower surfaces as
“the present invention.” ’260 patent col.6 ll.50. In addition, the specification consistently
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describes the batt with tufts on both sides. See id. col.6 ll.59–60, col.9 ll.29–30, col.13
ll.3–6, col.13 ll.30–31. Lydall’s description of the “needling used in producing the
present batt” makes clear that the batt must be needled from both sides to produce tufts
on both surfaces. Thus, contrary to Lydall’s assertions, figure 10 is entirely consistent
with the remainder of the specification discussing two-sided needling. In other words,
rather than disclosing a batt subjected to single-sided needling as a possible
embodiment, the specification clearly indicates that all batts disclosed in the ’260 patent
must undergo two-sided needling. Thus, we affirm the district court’s construction of
“tufts of fibers” as “clusters of binding fibers which have been intentionally needle-
punched on a downstroke and which extend beyond an opposite surface of the batt.”
We have considered Lydall’s remaining arguments and find them unpersuasive.
Therefore, for the foregoing reasons, we affirm the claim constructions of the district
court. Under the parties’ stipulation, the final judgment of noninfringement is also
affirmed.
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