throbber
CASE 0:06-cv-02459-JRT-FLN Document 26 Filed 05/04/07 Page 1 of 32
`
`UNITED STATES DISTRICT COURT
`DISTRICT OF MINNESOTA
`
`Civil No. 06-2459 JRT/FLN
`
`3M’S MARKMAN BRIEF
`
`3M INNOVATIVE PROPERTIES
`COMPANY
`
`and
`
`3M COMPANY,
`
`Plaintiffs,
`
`vs.
`
`ILLINOIS TOOL WORKS, INC.
`
`and
`
`ITW FINISHING, L.L.C.,
`
`Defendants.
`
`I.
`
`INTRODUCTION
`
`This lawsuit presents a classic case of patent infringement. 3M revolutionized the
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`paint spray industry in 2000 with the release of its PPS1 disposable cup system for spray
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`guns. Five years later, and over a year after 3M obtained a patent covering PPS, ITW
`
`released a fundamentally similar product called DeKups.2 ITW launched this product
`
`with knowledge of 3M’s patent rights.
`
`ITW now seeks to rewrite the claims of 3M’s patent by importing limitations from
`
`the specification into the claim language. Based on a long line of Federal Circuit cases,
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`1 PPS is a registered trademark.
`2 DeKups is a registered trademark.
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`Saint-Gobain Exhibit 1009 Page 1
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`CASE 0:06-cv-02459-JRT-FLN Document 26 Filed 05/04/07 Page 2 of 32
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`the Court should reject ITW’s attempts to add more limitations to 3M’s patent claims and
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`adopt the claim constructions 3M has proposed.
`
`II.
`
`BACKGROUND
`
`A.
`
`Prior Art Spray Guns and 3M’s Invention
`
`This case involves U.S. Patent No. 6,820,824 (“the ’824 patent”).3 Prior to the
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`invention claimed in the ’824 patent, automobile body shops and other paint shops faced
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`several problems when using spray guns to apply paint. A typical prior art spray gun is
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`shown in Figure 1 of the ’824 patent.
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`These problems revolved around the need to thoroughly clean a spray gun after use so
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`that left-over paint did not contaminate the next spray job. (Budd Decl. Ex. 1, 1:32-37;
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`3 A copy of the ’824 patent is attached as Exhibit 1 to the Declaration of Theodore M.
`Budd.
`
`2
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`Saint-Gobain Exhibit 1009 Page 2
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`CASE 0:06-cv-02459-JRT-FLN Document 26 Filed 05/04/07 Page 3 of 32
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`58-61.) Cleaning the reservoir of a spray gun was a difficult, time-consuming task that
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`involved large volumes of costly solvents. (Id. 2:3-9.) For environmental reasons, the
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`cleaning solvents had to be handled and disposed of with care. (Id. 2:5-9.) Furthermore,
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`because of the construction of prior art reservoirs and the need to avoid paint
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`contamination, paints were often mixed in disposable paper cups and then poured through
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`a filter into the paint reservoir. (Id. 1:37-44; 4:63-5:11.) Thus, preparing a paint spray
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`gun for use was a time-consuming, costly, and messy task.
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`3M’s solution incorporates a “removable, collapsible liner” that is used in a paint
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`gun reservoir during operation but which is nonetheless rigid enough to hold paint. (Id.
`
`2:15-31.) The disposable liner – when combined with its “removable lid” and other
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`features – eliminates the need for separate mixing cups and filters. (Id. 6:54-56.) This
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`has two advantages. First, by using a container that functions as both a mixing vessel and
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`a reservoir that can be mounted on a spray gun body, it greatly reduces the time and mess
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`associated with the transfer of paint from the mixing container to the spray gun. (Id. 6:4-
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`19.) Second, it eliminates the need to clean anything other than the spray gun body
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`between uses. (Id. 6:43-45.)
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`3
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`Saint-Gobain Exhibit 1009 Page 3
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`CASE 0:06-cv-02459-JRT-FLN Document 26 Filed 05/04/07 Page 4 of 32
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`B.
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`3M’s Paint Preparation System
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`3M’s Automotive Aftermarket Division launched the Paint Preparation System
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`(PPS) product in 2000. (Budd Decl. Ex. 4-5, 15, 17-18, 4 20 (Response to Interrog. No.
`
`1).) As shown below, the key components of 3M’s PPS product are similar to those
`
`shown in Figure 2 of the ’824 patent. The PPS product consists of a (1) fluid reservoir,
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`(2) collapsible liner, (3) removable lid, and (4) removable collar. (Id. 4-5, 15, 17-18.)
`
`Removable collar (4)
`
`Removable lid (3)
`
`Collapsible liner (2)
`
`Fluid reservoir (1)
`
`The PPS product achieved substantial success in the marketplace and won
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`international industry recognition for its innovation, including “Product of the Year” from
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`the British trade publications Bodyshop Magazine and Autotrade, the “Best New
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`Product” award for the body and paints section at a leading industry trade show in Spain,
`
`4 Exhibits 4-5, 15, and 17-18 to the Budd Declaration are brochures, a physical sample of
`3M’s PPS product, and videos attached for purposes of familiarizing the Court with this
`product.
`
`4
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`Saint-Gobain Exhibit 1009 Page 4
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`CASE 0:06-cv-02459-JRT-FLN Document 26 Filed 05/04/07 Page 5 of 32
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`and an “Innovation Award” at the leading South African trade show organized by the
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`trade publication Automotive Refinisher. (Id. Ex. 20 (Response to Interrog. No. 5).)
`
`C.
`
`The ’824 Patent
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`Well before the release of the PPS products, 3M filed its initial patent applications
`
`describing the above invention in Great Britain on January 24, 1997 and June 18, 1997.
`
`(Budd Decl. Ex. 2, pps. 125, 146.) On January 14, 1998, 3M filed a Patent Cooperation
`
`Treaty (“PCT”) application with the USPTO. (Id. pps. 50-51.) On July 23, 1999, 3M
`
`filed the U.S. patent application that eventually became the ’824 patent. (Id. pps. 50-85.)
`
`The ’824 patent was subjected to rigorous examination by the USPTO for more
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`than five years. (Id. Ex. 2, pps. 191-312.) During this period, the PTO issued six office
`
`actions, 3M submitted six amendments or responses, and 3M conducted an interview
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`with the PTO examiner. (Id.) Over 100 relevant references were cited during
`
`prosecution, including 67 U.S. patents and 38 foreign patents. (Id. Ex. 1.) The PTO
`
`examiner considered not only extensive art relating to both gravity-fed and siphon-fed
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`paint spray guns, but also art relating to disposable liners for paint trays, disposable liners
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`for trash receptacles, liquid sample testing holders, beverage dispensers, and infant bottle
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`liners. (Id.) Finally, after this examination, and consideration of numerous references,
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`the PTO issued the ’824 patent on November 23, 2004. (Id.)
`
`The ’824 patent has six claims, five of which are at issue in this lawsuit. The only
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`independent claim of the patent is reproduced below:
`
`1. A spray gun comprising: a fluid reservoir; a removable,
`collapsible, liner which, prior to adding a fluid to the liner,
`has a shape corresponding to, and is a close fit within, the
`
`5
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`Saint-Gobain Exhibit 1009 Page 5
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`CASE 0:06-cv-02459-JRT-FLN Document 26 Filed 05/04/07 Page 6 of 32
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`interior of the reservoir, a removable lid located in an opening
`in the reservoir, a removable collar which secures the lid to
`the reservoir at the periphery of the opening, and a spray
`nozzle for dispensing fluid from within the liner, wherein the
`liner collapses when fluid is withdrawn from within the liner
`during operation of the gun, and in which the combination of
`reservoir and liner has a fill opening which is inverted when
`connected to the spray gun in normal operation with fluid
`passing from within the liner to the spray nozzle.
`
`(Id. Ex. 1, 16:19-31.)
`
`The invention of claim 1 thus has four primary components:
`
`(1) a fluid reservoir;
`
`(2) a removable, collapsible, liner that is pre-formed to fit closely
`within the interior of the fluid reservoir;
`
`(3) a removable lid that fits the reservoir; and
`
`(4) a removable collar that secures the lid to the reservoir.
`
`The claim also requires:
`
`(5) the liner to collapse when fluid is withdrawn from the liner
`during operation of the spray gun; and
`
`(6) that the combination of the reservoir and liner has a fill opening
`which is inverted when connected to the spray gun in normal
`operation.
`
`6
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`Saint-Gobain Exhibit 1009 Page 6
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`CASE 0:06-cv-02459-JRT-FLN Document 26 Filed 05/04/07 Page 7 of 32
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`Examples of the key features of 3M’s invention are shown in the embodiments
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`illustrated in Figures 2 and 6 of the ’824 patent.
`
`D.
`
`Previous Litigation Involving the ’824 Patent
`
`On the day ’824 patent issued, 3M sued Louis M. Gerson Co., Inc. for patent
`
`infringement regarding a knock-off of the PPS product called the “Gerson Paint System.”
`
`(Budd Decl. Ex. 10.) Within months, Gerson consented to an injunction admitting
`
`infringement and validity of the ’824 patent and barring the launch of its infringing
`
`product. (Id. Ex. 11.)
`
`E.
`
`The Accused Product: DeKups
`
`ITW’s DeKups product is nearly identical in form and function to 3M’s PPS
`
`product. As depicted below, ITW’s DeKups product contains four components: (1) a
`
`7
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`Saint-Gobain Exhibit 1009 Page 7
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`CASE 0:06-cv-02459-JRT-FLN Document 26 Filed 05/04/07 Page 8 of 32
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`fluid reservoir, (2) a collapsible liner, (3) a removable lid, and (4) a removable collar.
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`(Budd Decl. Ex. 3, 16, 19.5)
`
`Removable collar (4)
`
`Removable lid (3)
`
`Collapsible liner (2)
`
`Fluid Reservoir (1)
`
`DeKups
`
`5 Exhibits 3, 16, and 19 to the Budd Declaration are a brochure, physical sample of ITW’s
`DeKups product, and video attached for purposes of familiarizing the Court with this
`product.
`
`8
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`Saint-Gobain Exhibit 1009 Page 8
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`CASE 0:06-cv-02459-JRT-FLN Document 26 Filed 05/04/07 Page 9 of 32
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`A comparison to Figure 2 of the ’824 patent shows that DeKups embodies a nearly
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`identical design to one of the embodiments of the claimed invention.
`
`DeKups
`
`9
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`Saint-Gobain Exhibit 1009 Page 9
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`CASE 0:06-cv-02459-JRT-FLN Document 26 Filed 05/04/07 Page 10 of 32
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`A side-by-side comparison between 3M’s PPS and ITW’s DeKups shows
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`substantial similarities between the two products.
`
`PPS
`
`DeKups
`
`PPS
`
`DeKups
`
`10
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`Saint-Gobain Exhibit 1009 Page 10
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`CASE 0:06-cv-02459-JRT-FLN Document 26 Filed 05/04/07 Page 11 of 32
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`Prior to the launch of DeKups in 2006, ITW sold metal paint reservoirs, like the
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`prior art reservoir depicted in Figure 1 of the ’824 patent, for attachment to spray guns.
`
`(Budd Decl. Ex. 21.) ITW also sold plastic liners for metal paint reservoirs. (Id.)
`
`F.
`
`The ’824 Patent Claim Terms and Phrases in Dispute
`
`The parties dispute six claim terms and phrases, each of which appears in claim 1
`
`of the ’824 patent. Claim 1 is reproduced below with the disputed terms highlighted.
`
`1. A spray gun comprising: a fluid reservoir; a removable,
`collapsible, liner which, prior to adding a fluid to the liner,
`has a shape corresponding to, and is a close fit within, the
`interior of the reservoir, a removable lid located in an
`opening in the reservoir, a removable collar which secures
`the lid to the reservoir at the periphery of the opening, and a
`spray nozzle for dispensing fluid from within the liner,
`wherein the liner collapses when fluid is withdrawn from
`within the liner during operation of the gun, and in which
`the combination of reservoir and liner has a fill opening
`which is inverted when connected to the spray gun in normal
`operation with fluid passing from within the liner to the spray
`nozzle.
`
`(Id. Ex. 1, 16:19-31 (emphasis added).)
`
`11
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`Saint-Gobain Exhibit 1009 Page 11
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`CASE 0:06-cv-02459-JRT-FLN Document 26 Filed 05/04/07 Page 12 of 32
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`III. LEGAL ARGUMENT
`
`A.
`
`The Law of Claim Construction
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`The words of a patent claim are generally given their ordinary and customary
`
`meaning. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). The
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`ordinary and customary meaning of a claim term is the “meaning that the term would
`
`have to a person of ordinary skill in the art in question at the time of the invention.”
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`Phillips, 415 F.3d at 1313. To determine how one of ordinary skill in the art would
`
`understand a claim term, courts may consider a number of sources, including the claims,
`
`patent specification, prosecution history, and extrinsic evidence. Vitronics Corp. v.
`
`Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
`
`The Federal Circuit has recognized that the process of determining the ordinary
`
`meaning of non-technical claim terms is “not always a difficult one” and occasionally
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`“involves little more than the application of the widely accepted meaning of commonly
`
`understood words.” Acumed LLC v. Stryker Corp., - F.3d -, 2007 U.S. App. LEXIS 8375
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`*9 (Fed. Cir. Apr. 12, 2007) (quoting Phillips, 415 F.3d at 1314). Some non-technical
`
`terms, such as “close” and “generally,” are inherently imprecise and need not be
`
`construed with mathematical precision. Anchor Wall Sys. v. Rockwood Retaining Walls,
`
`Inc., 340 F.3d 1298, 1310-11 (Fed. Cir. 2003).
`
`In Phillips, the Federal Circuit reaffirmed the importance of the patent
`
`specification in claim construction and reiterated that it is “the single best guide to the
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`meaning of a disputed term.” 415 F.3d at 1315 (quoting Vitronics, 90 F.3d at 1582). The
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`Federal Circuit also restated the well-established rule that a patentee may include a
`
`12
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`Saint-Gobain Exhibit 1009 Page 12
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`CASE 0:06-cv-02459-JRT-FLN Document 26 Filed 05/04/07 Page 13 of 32
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`special definition of a claim term in the specification, and if so, the patentee’s
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`lexicography controls. Phillips, 415 F.3d at 1316.
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`It is equally well established, however, that a court may not ordinarily import
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`limitations from the specification into the patent claims during claim construction. As the
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`Federal Circuit has instructed:
`
`We do not import limitations into claims from examples or
`embodiments appearing only in a patent’s written description,
`even when a specification describes very specific
`embodiments of the invention or even describes only a single
`embodiment, unless the specification makes clear that “the
`patentee . . . intends for the claims and the embodiments in
`the specification to be strictly coextensive.”
`
`JVW Enters. v. Interact Accessories, Inc., 424 F.3d 1324, 1335 (Fed. Cir. 2005) (quoting
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`Phillips, 415 F.3d at 1323).
`
`Since the landmark Phillips decision, the Federal Circuit has continued to
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`reinforce the principle that limitations may not be imported from the specification. See
`
`Acumed, 2007 U.S. App. LEXIS 8375 at *11 (rejecting attempts to read features of a
`
`preferred embodiment into the claims as a limitation); MBO Labs., Inc. v. Becton,
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`Dickson & Co., 474 F.3d 1323, 1333-34 (Fed. Cir. 2007) (improper to limit claimed
`
`invention to embodiments shown in patent figures); Callicrate v. Wadsworth Mfg., 427
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`F.3d 1361, 1367-68 (Fed. Cir. 2005) (reversing district court’s claim construction limited
`
`to the preferred embodiment); Free Motion Fitness, Inc. v. Cybex Int’l, 423 F.3d 1343,
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`1350 (Fed. Cir. 2005); CollegeNet, Inc. v. ApplyYourself, Inc. 418 F.3d 1225, 1231 (Fed.
`
`Cir. 2005) (“In examining the specification for proper context, however, this court will
`
`not at any time import limitations from the specification into the claims.”); N. Am.
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`13
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`Saint-Gobain Exhibit 1009 Page 13
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`CASE 0:06-cv-02459-JRT-FLN Document 26 Filed 05/04/07 Page 14 of 32
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`Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335,1348 (Fed. Cir. 2005) (error
`
`to import specification’s recommended dimensions for commercial embodiment into
`
`claims).
`
`In addition, it is important to note that the Federal Circuit has expressed frustration
`
`over construing claim terms based on a record that contains no information about the
`
`accused products. Wilson Sporting Goods Co. v. Hillerich & Bradsby Co., 442 F.3d
`
`1322, 1326-27 (Fed. Cir. 2006) (explaining that “knowledge of [the accused] product or
`
`process provides meaningful context for the first step of the infringement analysis, claim
`
`construction”). According to the Federal Circuit, considering the accused product during
`
`claim construction is appropriate because it provides “a proper context for an accurate
`
`claim construction.” Lava Trading, Inc. v. Sonic Trading Mgmt., LLC, 445 F.3d 1348,
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`1350 (Fed. Cir. 2006); accord Wilson Sporting Goods, 442 F.3d at 1327.
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`14
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`Saint-Gobain Exhibit 1009 Page 14
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`CASE 0:06-cv-02459-JRT-FLN Document 26 Filed 05/04/07 Page 15 of 32
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`B.
`
`Claim Terms and Phrases in Dispute
`
`1.
`
`FLUID RESERVOIR
`
`3M’s Proposed Construction
`
`ITW’s Proposed Construction
`
`A container or receptacle for
`supporting a liner
`
`A receptacle with side walls and a
`base for supporting the liner.
`
`The parties agree that a fluid reservoir includes a “receptacle” and that the
`
`receptacle is “for supporting a liner.” ITW argues that the “receptacle for supporting a
`
`liner” must also include “side walls and a base.” The Court should reject ITW’s attempt
`
`to add these structural limitations from the specification.
`
`The term “reservoir” appears over 80 times in the ’824 patent, and the many
`
`different varieties of spray guns and reservoirs described in the specification confirm that
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`spray gun reservoirs are not limited to a particular configuration. (Budd Decl. Ex. 1,
`
`1:49-57.) The only requirement placed on the claimed reservoir by the patent is that it
`
`supports a disposable liner. (Id. 15:18-21) (“the receptacle is intended to contain a
`
`liner”). The specification explains that because the reservoir is intended to contain a
`
`liner, “it is not essential for the walls of the receptacle to be solid: the receptacle could,
`
`for example, have the form of a framework for containing the liner.” (Id. 15:18-21.) The
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`patent thus does not require anything more than some kind of structure that supports a
`
`liner.
`
`ITW seeks to import additional structural limitations of “side walls and a base”
`
`into the claim based on a partial description of the preferred embodiment in the
`
`15
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`Saint-Gobain Exhibit 1009 Page 15
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`CASE 0:06-cv-02459-JRT-FLN Document 26 Filed 05/04/07 Page 16 of 32
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`specification, which describes the reservoir in Figure 2 as having an air hole in its base.
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`(Id. 5:14-20.) A specification’s mere reference to a feature of a preferred embodiment is
`
`not sufficient to import additional limitations into a claim. See Acumed, 2007 U.S. App.
`
`LEXIS 8375 at *15-23 (rejecting defendant's attempt to limit a claim reciting “transverse
`
`holes,” by importing from the specification a requirement that the holes be
`
`“perpendicular”); MBO Labs., 474 F.3d at 1333-34 (improper to limit claimed invention
`
`to embodiments in patent figures); CollegeNet, 418 F.3d at 1231 (“In examining the
`
`specification for proper context, however, this court will not at any time import
`
`limitations from the specification into the claims.”).
`
`In sum, the Court should adopt 3M’s plain meaning and reject ITW’s improper
`
`attempt to read details from the preferred embodiment into the “fluid reservoir” claim
`
`limitation.
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`16
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`Saint-Gobain Exhibit 1009 Page 16
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`CASE 0:06-cv-02459-JRT-FLN Document 26 Filed 05/04/07 Page 17 of 32
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`2.
`
`COLLAPSIBLE
`
`3M’s Proposed Construction
`
`ITW’s Proposed Construction
`
`The term “collapsible” means the
`side walls of a liner can be distorted
`so that, by application of moderate
`pressure (e.g., hand pressure), the
`rim of the liner can be pushed
`towards the base of the container,
`without the side walls being
`ruptured.
`
`3M proposes the following
`construction of the term
`“collapsible,” which is consistent
`with the definition of “collapsible”
`provided at Col. 3, lines 49-54 of
`the ’824 patent:
`
`Capable of being distorted by
`application of moderate pressure
`without being ruptured
`
`Further, 3M proposes the
`following construction of the
`phrase “collapsible, liner,” which
`is also consistent with the
`definition of “collapsible”
`provided at Col. 3, lines 49-54 of
`the ’824 patent:
`
`The side walls of a liner can be
`distorted so that, by application of
`moderate pressure, (e.g., hand
`pressure), the rim of the liner can
`be pushed towards the base of the
`liner, without the side walls being
`ruptured
`
`Both parties refer to the following passage in the specification for the definition of
`
`“collapsible”:
`
`The term "collapsible" as used herein with reference to the
`side walls of a container/liner in accordance with the
`invention indicates that the side walls can be distorted so that,
`by the application of moderate pressure (e.g. hand pressure),
`the rim of the container can be pushed towards the base of the
`container, without the side walls being ruptured.
`
`17
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`Saint-Gobain Exhibit 1009 Page 17
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`CASE 0:06-cv-02459-JRT-FLN Document 26 Filed 05/04/07 Page 18 of 32
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`(Budd Decl. Ex. 1, 3:49-54.)
`
`Based on this explicit language from the specification, 3M proposes that the term
`
`“collapsible” means “capable of being distorted by application of moderate pressure
`
`without being ruptured.” The above passage from the specification makes clear that an
`
`object is “collapsible” if it can be “distorted” with “moderate pressure” without becoming
`
`“ruptured.” If, on the other hand, an object ruptures when distorted with moderate
`
`pressure, then it is not collapsible.
`
`The passage not only clarifies what it means for an object to be “collapsible” but
`
`also discusses the term “collapsible” with “reference to the side walls of a container/liner
`
`in accordance with the invention.” (Id. 3:49-51 (emphasis added).) The passage explains
`
`that when the term “collapsible” is used in connection with “side walls of a
`
`container/liner,” this means that “the side walls can be distorted so that, by the
`
`application of moderate pressure (e.g. hand pressure), the rim of the container can be
`
`pushed towards the base of the container, without the side walls being ruptured.” (Id.
`
`3:50-54.) Based on the joining of the term “collapsible” with the term “liner,” 3M
`
`proposes that the phrase “collapsible liner” means “the side walls of a liner can be
`
`distorted so that, by application of moderate pressure, (e.g., hand pressure), the rim of the
`
`liner can be pushed towards the base of the liner, without the side walls being ruptured.”
`
`ITW’s proposed definition of “collapsible” is confusing and unworkable. ITW
`
`contends that the term “collapsible”alone (as opposed to the phrase “collapsible liner”)
`
`means “the side walls of a liner can be distorted so that, by application of moderate
`
`18
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`Saint-Gobain Exhibit 1009 Page 18
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`CASE 0:06-cv-02459-JRT-FLN Document 26 Filed 05/04/07 Page 19 of 32
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`pressure (e.g., hand pressure), the rim of the liner can be pushed towards the base of the
`
`container, without the side walls being ruptured.” In proposing this definition, ITW
`
`eliminates the passage’s reference to “as used herein with reference to the side walls of a
`
`container/liner in accordance with the invention.” This does not make any sense. If ITW
`
`intends to use the entire passage as a definition, then it should make clear that the passage
`
`is discussing how the term collapsible applies “with reference to the side walls of a
`
`container/liner.”6
`
`While both parties agree the Court should ground its construction of “collapsible”
`
`in the specification, only 3M defines this term without reference to a particular physical
`
`structure. If the Court decides to construe “collapsible” with reference to a liner, then it
`
`should make clear that it is defining the phrase “collapsible liner,” not the term
`
`“collapsible” alone.
`
`6 ITW inexplicably inserts the word “container” at the end of its proposed definition of
`“collapsible.” ITW contends that “the side walls of a liner can be distorted so that, by
`application of moderate pressure (e.g., hand pressure), the rim of the liner can be pushed
`towards the base of the container, without the side walls being ruptured.” There is no
`reason for ITW to to use the term “liner” when discussing side walls and a rim but then to
`switch to “container” when discussing a base. The entire definition should use the term
`“liner.”
`
`19
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`Saint-Gobain Exhibit 1009 Page 19
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`CASE 0:06-cv-02459-JRT-FLN Document 26 Filed 05/04/07 Page 20 of 32
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`3.
`
`LINER
`
`3M’s Proposed Construction
`
`ITW’s Proposed Construction
`
`A “liner” is a single piece of plastic
`material that holds fluid and is
`formed without any pleats,
`corrugations, seams, joints or
`gussets, or any groove at the
`internal junction of the side walls
`with the base.
`
`3M contends that no construction
`is required for the term “liner.”
`3M proposes that the term “liner”
`means liner. In the alternative, if
`the Court determines that a
`construction of the term “liner” is
`necessary, 3M proposes the
`following construction of the term
`“liner”:
`
`A structure that covers or lines a
`surface of another structure
`
`The parties have a substantial dispute regarding the term “liner.” 3M sees no
`
`reason to define such a simple term or, if the Court decides to define the term, 3M
`
`contends that a liner “covers or lines a surface of another structure.” ITW, in contrast,
`
`seeks a detailed definition of the term “liner” which includes a series of structural
`
`limitations taken from the specification. The Court should reject ITW’s attempt to read
`
`these limitations into the claim.
`
`The ’824 patent uses the term “liner” nearly 200 times without setting forth an
`
`explicit definition. The reason for this is clear: one of ordinary skill in the art understands
`
`what constitutes a “liner” because the term defines itself. 3M’s proposed construction
`
`recognizes that the term “liner” is self-defining, and that any further construction of the
`
`term is not helpful in understanding the claimed invention.
`
`20
`
`Saint-Gobain Exhibit 1009 Page 20
`
`

`
`CASE 0:06-cv-02459-JRT-FLN Document 26 Filed 05/04/07 Page 21 of 32
`
`A review of numerous dictionaries supports 3M’s position. A liner is commonly
`
`understood to mean “a lining.” (Budd Decl. Ex. 6, The American Heritage College
`
`Dictionary (3rd Ed. 1993) (“A lining; material used as a lining”); The American Heritage
`
`Dictionary of the English Language (3rd Ed. 1992) (“A lining; material used as a
`
`lining”); Webster’s New World Dictionary of American English (Third College Ed. 1994)
`
`(“A lining or something that suggests a lining by fitting inside something else”); see also
`
`id. (additional definitions of “liner”).)
`
`Moreover, claim 1 already includes many limitations for the claimed liner,
`
`including that it must be: (1) removable; (2) collapsible; (3) have a shape corresponding
`
`to the interior of the reservoir prior to adding a fluid to the liner; (4) have a shape that is a
`
`close fit within the interior of the reservoir prior to adding a fluid to the liner; (5) collapse
`
`when fluid is withdrawn from within the liner during operation of a spray gun; (6) have a
`
`fill opening; and (7) have a fill opening which is inverted when connected to a spray gun
`
`in normal operation.
`
`ITW nonetheless seeks to add at least 7 more limitations by cherry-picking
`
`particular features from the preferred embodiment: (8) no pleats; (9) no corrugations; (10)
`
`no seams; (11) no joints; (12) no gussets; (13) no groove at the internal junction of the
`
`side walls within the base; and (14) made of a single piece of plastic material.7 ITW
`
`7 ITW actually seeks to add further limitations to the claimed liner through its
`construction of the claim terms “collapsible,” “prior to adding a fluid to the liner, has a
`shape corresponding to, and is a close fit within, the interior of the reservoir,” and
`“wherein the liner collapses when fluid is withdrawn from within the liner during
`operation of the gun.”
`
`21
`
`Saint-Gobain Exhibit 1009 Page 21
`
`

`
`CASE 0:06-cv-02459-JRT-FLN Document 26 Filed 05/04/07 Page 22 of 32
`
`selectively extracts these limitations from a single description of the preferred
`
`embodiment.
`
`As described below, the liner is self-supporting but is also
`collapsible and, preferably, has a comparatively rigid base
`13A and comparatively thin side walls 13B so that, when it
`collapses, it is in the longitudinal direction by virtue of the
`side walls collapsing rather than the base. In addition, the
`liner 13 has no pleats, corrugations, seams, joints or gussets,
`and also no groove at the internal junction of the side walls
`13B with the base 13A.
`
`(Budd Decl. Ex. 1, 5:45-52 (emphasis added).)
`
`ITW’s construction suffers from a flaw recognized by the Supreme Court long
`
`ago: “[I]f we once begin to include elements not mentioned in the claim, in order to limit
`
`such claim . . . we should never know where to stop.” McCarty v. Lehigh Valley R. Co.,
`
`160 U.S. 110, 116, 16 S. Ct. 240, 40 L. Ed. 358, (1895); accord Amgen Inc. v. Hoechst
`
`Marion Roussel, Inc., 314 F.3d 1313, 1325 (Fed. Cir. 2003).
`
`In sum, ITW’s attempt to improperly limit the construction of “liner” should be
`
`rejected and 3M’s proposed definition of the term should be adopted by the Court.
`
`22
`
`Saint-Gobain Exhibit 1009 Page 22
`
`

`
`CASE 0:06-cv-02459-JRT-FLN Document 26 Filed 05/04/07 Page 23 of 32
`
`4.
`
`PRIOR TO ADDING A FLUID TO THE LINER, HAS A SHAPE
`CORRESPONDING TO, AND IS A CLOSE FIT WITHIN, THE
`INTERIOR OF THE RESERVOIR
`
`3M’s Proposed Construction
`
`ITW’s Proposed Construction
`
`The phrase “prior to adding a fluid
`to the liner, has a shape
`corresponding to, and is a close fit
`within, the interior of the reservoir”
`means that the exterior of the liner
`is formed to have the same
`geometrical shape and size as the
`interior walls and base of the
`reservoir before fluid is added to the
`liner so that the exterior of the
`empty liner is in contact with the
`interior side walls and base of the
`reservoir when the liner is inserted
`into the reservoir.
`
`3M contends that no construction
`is required for the phrase “prior to
`adding a fluid to the liner, has a
`shape corresponding to, and is a
`close fit within, the interior of the
`reservoir.” 3M proposes that the
`phrase “prior to adding a fluid to
`the liner, has a shape
`corresponding to, and is a close fit
`within, the interior of the
`reservoir” means prior to adding a
`fluid to the liner, has a shape
`corresponding to, and is a close fit
`within, the interior of the
`reservoir.
`
`If the Court determines that
`constructions of the term
`“corresponding” and phrase “close
`fit within” are necessary, 3M
`proposes the following
`construction of the phrase “prior to
`adding a fluid to the liner, has a
`shape corresponding to, and is a
`close fit within, the interior of the
`reservoir”:
`
`The liner has a similar shape as
`the interior of the reservoir before
`fluid is added to the liner so that
`the liner fits within the reservoir
`with little space between the
`exterior of the liner and the
`interior of the reservoir
`
`23
`
`Saint-Gobain Exhibit 1009 Page 23
`
`

`
`CASE 0:06-cv-02459-JRT-FLN Document 26 Filed 05/04/07 Page 24 of 32
`
`The dispute regarding this limitation centers around the phrases “corresponding
`
`to” and “close fit within.” 3M contends that these two phrases do not require further
`
`construction, and that any additional construction will not aid in understanding the
`
`claimed invention. In contrast, ITW proposes an arbitrary definition that is not supported
`
`by any intrinsic or extrinsic evidence.
`
`3M’s Position on “Corresponding To”. The patent uses the phrases “corresponds
`
`to” or “corresponding to” approximately six times in describing the relationship between
`
`the shapes of the liner and fluid reservoir. In each instance, the patent describes the liner
`
`as having a “shape corresponding to . . . the interior of the reservoir,” or some similar
`
`relationship. (Budd Decl. Ex. 1, 2:42, 45, 51-52; 3:13-14; 5:20-21, 41-42.) That is, the
`
`specification uses the exact same language as claim 1, but never defines the phrase
`
`“corresponding to” in greater detail.
`
`By mirroring the claim language without elaboration, the specification indicates
`
`that no further definition of the phrase “corresponding to . . . the interior of the reservoir”
`
`is required for one of ordinary skill in the art to understand this feature of the claimed
`
`invention. Such a person would read this description of the liner and need no further
`
`details on what is meant by a “corresponding to . . . the interior of the reservoir.” Andrew
`
`Corp. v. Gabriel Electronics, Inc., 847 F.2d 819, 821 (Fed. Cir. 1988) (quoting Seattle
`
`Box Co. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984) (noting
`
`that the acceptability of imprecise claim terms “depends on ‘whether one of ordinary skill
`
`in the art would understand what is claimed’”)). Consequently, because the goal of claim
`
`construction is to assign a claim term the meaning that an “ordinary artisan after reading
`
`24
`
`Saint-Gobain Exhibit 1009 Page 24
`
`

`
`CASE 0:06-cv-02459-JRT-FLN Document 26 Filed 05/04/07 Page 25 of 32
`
`the entire patent” would give to the term, Phillips, 415 F.3d at 1321, it is 3M’s position
`
`that the Court need not provide a definition more elaborate than what is provided by the
`
`specification, i.e., “ corresponding to . . . the interior of the reservoir” means
`
`“corresponding to . . . the interior of the reservoir.”
`
`If t

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