Case 1:10-cv-00788-GMS Document 70 Filed 09/25/12 Page 1 of 2 PageID #: 563

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE HOLLINGSWORTH & VOSE FILTRATION LTD., Plaintiff,
V.

DELSTAR TECHNOLOGIES, INC. and ECN INDUSTRIES, INC., Defendants.

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Civil Action No. 10-788 GMS

ORDER

WHEREAS before the court is the defendants' Motion for Clarification (D.I. 53) of the court's Order Construing the Terms of U.S. Patent No. 6,623,548 (the "'548 patent"); and WHEREAS the court has considered the parties' submissions relating to the Motion for Clarification as well as the submissions pursuant to the court's August 29,2012 Order (D.I. 60); IT IS HEREBY ORDERED that: The defendants' Motion for Clarification (D.I. 53) is GRANTED. IT IS FURTHER ORDERED, ADJUDGED, AND DECREED that, as used in the asserted claims of the '548 patent: The "blend" is not limited to only polypropylene fibres, dry spun halogen free acrylic fibres, and polyvinyl chloride fibres but, rather, is open to the inclusion of other types of unrecited fibres, including wet spun halogen free acrylic fibres. 1

Claim 1 of the '548 patent refers to "filter material comprising: a blend of polypropylene fibres and dry spun halogen free acrylic fibres." In its Order Construing the Terms of U.S. Patent No. 6,623,548, the court followed settled principles of claim construction to conclude that "the [filter] material, which is followed by the word 'comprising,' may include other types of fibres in addition to ... polypropylene and dry spun fibres." (D.I. 50 at 1 n.l.) The defendants now ask the court to clarify "whether the 'blend' is open to the inclusion of other types of

Case 1:10-cv-00788-GMS Document 70 Filed 09/25/12 Page 2 of 2 PageID #: 564

Dated: September

JJ_, 2012

unrecited fibres, or whether it is only the 'filter material' that can include other types ofunrecited fibres." (D.I. 53 at 5.) As an initial matter, the court is not certain that this distinction makes a difference where there is no indication that the blend can be readily differentiated from the remainder of the filter material. In support of their position that the blend is a discrete component, the defendants observe that the specification recites the blend separately from the filter material and refers to the blend as undergoing certain processes, including scouring, carding, and needling. (D.I. 63 at 2-3.) Presumably, it is the defendants' position that fibres undergoing these processes are necessarily part of that discrete blend. The court, however, is not convinced by this putative line of reasoning-the mere fact that fibres in the blend undergo scouring, carding, and needling does not mean that other elements in the filter material cannot also undergo these processes. In short, whil~~ the specification and claim language do suggest that the blend is a conceptually discrete component of the filter material, it is unclear that the defendants can point to a means of practically differentiating between the two such that it would matter "whether it is only the 'filter material' that can include other types ofunrecited fibres." Nevertheless, for the purposes of this order, the court will assume that this distinction is of consequence. The court recognizes first that the blend is not rendered open-ended simply because it is preceded by the transitional phrase "comprising." The plaintiff's reliance here on Robie v. Car/ten, 171 F.2d 310 (C. C.P.A. 1948), is misplaced. In that case, the claim at issue was for "a base adhesive 'comprising' a mixture of soluble silicate and a resin." !d. at 311. The Robie court noted that "comprising" is an open-ended word and that the "refer[ ence] to the base adhesive as 'comprising' a mixture of silicate and resin ... mak[es] it clear that other materials may be present." Contrary to the plaintiff's suggestion, the Robie court did not find that the use of the term "comprising" made it '"clear that other materials may be present' in the mixture." (D.I. 62 at 3.) Under its most natural reading, Robie simply makes the point that placing "comprising" after "base adhesive" allows for other materials to be present in the base adhesive. The transition "comprising" generally renders the preceding term (e.g., the "filter material") open-ended, but it has no such effect on subsequently recited claim elements (e.g, the "blend"). See Dippin' Dots, Inc. v. Mosey, 476 F.3d 1337, 1343 (Fed. Cir. 2007). The plaintiff is correct, however, in suggesting that-like "comprising"--the term "blend" itself ordinarily conveys the concept of"including, but not limited to." The defendants have acknJwledged that "[t]he blend is a mixture of fibres," (D.I. 39 at 11.), and the Federal Circuit in Mars, Inc. v. HJ. Heinz Co., 377 F.3d 1369 (Fed. Cir. 2004), recognized that the term "mixture" is open-ended. See id. at 1376 ("The use of the term 'mixture' does not exclude additional, unnamed ingredients."). The Mars, Inc. court construed the following language: "A dual texture pet or animal food product comprising: a soft inner component of a dual texture p~~t or animal food product containing a mixture of lipid and solid ingredients." !d. at 1372. Just as the Federal Circuit found that "[a] mixture with lipids, solids and a third ingredient is ... still [a] 'mixture[] of lipid and solid ingredients' as required by the claims," the court now finds that a blend of polypropylene fibres, dry spun halogen free acrylic fibres, and other unrecited fibres is still a blend of polypropylene fibres and dry spun halogen free acrylic fibres. See id. at 1376. Lastly, the court notes that a broad view of the intrinsic evidence merely demonstrates that the blend is required to contain both "polypropylene fibres and dry spun halogen free acrylic fibres." The intrinsic evidence suggests no additional requirement that the blend be limited to only these element:;. While the defendants claim that the inventors established such a limit through arguments made in the prosecution process, the statements they point to are inconclusive. (D.I. 63 at 4.) Additionally, the court has already found that there was no disavowal of wet spun halogen free acrylic fibres. (D.I. 50 at n.l.)