PHELPS DODGE'S OPENING CLAIM CONSTRUCTION BRIEF
16 Phelps Dodge Corporation, a New York 17 corporation, et al., 18 Defendants.
19 Phelps Dodge Corporation, a New York 20 corporation, et al., 21 22 23 Counterclaim Plaintiffs, vs.
Richard G. Krauth, an individual, and R.M. 24 Wade & Co., an Oregon corporation, 25 26 27 28
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Counterclaim Defendants.
1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 E. F. G. A. B. C. D. II. 2. 3. B.
Table of Contents Page Table of Authorities............................................................................................................ iii Introduction ......................................................................................................................... 1 Argument ............................................................................................................................. 2 I. PRINCIPLES OF CLAIM CONSTRUCTION........................................................ 2 A. Legal Standard............................................................................................... 2 The Claim Construction Process ................................................................... 3 1. Intrinsic Evidence............................................................................... 3 a. b. c. Claim Terms............................................................................ 3 The Specification .................................................................... 4 Prosecution History................................................................. 4
Extrinsic Evidence ............................................................................. 5 Other Claim Construction Principles ................................................. 6
DISPUTED CLAIM TERMS .................................................................................. 6 In both patents, the Preambles and their terms are claim limitations. .......... 6 In both patents, the term "Composed of."................................................... 12 In both patents, the term "Ore bed." ........................................................... 14 The term "Crushed metal-laden ore" in the `806 patent and the term "Granular metal-laden ore" in the `279 patent............................................ 16 1. 2. "Crushed" as used in the `806 patent. .............................................. 16 "Granular" as used in the `279 patent. ............................................. 19
In both patents, the term "Impervious pad." ............................................... 23 In both patents, the term "Communicating." .............................................. 24 In both patents, the term "Pre-calibrated" and in the `279 patent the term "Calibrating." ...................................................................................... 26
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H. I. J. K.
In both patents, the term "Overlapping patterns." ...................................... 28 In both patents, emitting "directly and collectively" into said ore bed in "overlapping patterns." ........................................................................... 29 In both patents, the term "Predetermined flow rates." ................................ 29 In the `806 patent, the term "Labyrinth-type flow passage means."........... 30 In the `279 patent, the term "Emitters" and in the `806 patent, the term "Emitter means."................................................................................. 31 In the `806 patent, the term "Supply means." ............................................. 31 In the `806 patent, the term "Tube means." ................................................ 31 In the `806 patent, the term "In-line emitter."............................................. 31 In the `806 patent, the term "Inlet means." ................................................. 32 In the `806 patent, the term "Outlet means." .............................................. 32
UNDISPUTED TERMS......................................................................................... 31 A. B. C. D. E. F.
Conclusion ......................................................................................................................... 32
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Table of Authorities Page Cases AFG Indus., Inc. v. Cardinal IG Co., 239 F.3d 1239 (Fed. Cir. 2001) ....................... 12, 13 Bell Atl. Network Servs., Inc. v. Covad Commc'ns. Group, Inc., 262 F.3d 1258 (Fed. Cir. 2001) ..................................................................................... 20 Bell Commc'ns Research, Inc. v. Vitalink Commc'ns Corp., 55 F.3d 615 (Fed. Cir. 1995) ........................................................................................................... 7, 8 Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (1989) ............................... 2 Boss Control, Inc. v. Bombardier Inc., 410 F.3d 1372 (Fed. Cir. 2005)..................... 30, 31 C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858 (Fed. Cir. 2004) ............................ 21 CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359 (Fed. Cir. 2002) ............................. 4 Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973 (Fed. Cir. 1999)....................................... 5 Fantasy Sports Props., Inc. v Sportsline.com, Inc., 287 F.3d 1108 (Fed. Cir. 2002) ............................................................................................................. 11 Festo Corp. v Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002) ......... 2, 5, 11 Gen. Am. Transp. Corp. v. Cryo-Trans, Inc., 93 F.3d 766 (Fed. Cir. 1996)..................... 21 Gen. Elec. Co. v. Nintendo Co., 179 F.3d 1350, 1361-62 (Fed. Cir. 1999) ................. 9, 10 Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473 (Fed. Cir. 1998)............................ 5 Hill-Rom Co. v. Kinetic Concepts, Inc., 209 F.3d 1337 (Fed. Cir. 2000) ........................... 9 In re Bertsch, 132 F.2d 1014 (CCPA 1942)................................................................ 12, 13 Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364 (Fed. Cir. 2003)......................... 10 Johnson & Johnston Assocs. v. R.E. Serv. Co., 285 F.3d 1046 (Fed. Cir. 2002) (en banc) ....................................................................................... 14, 18 Liquid Dynamics Corp. v. Vaughn Co., 355 F.3d 1361 (Fed. Cir. 2004) ......................... 17 Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996)............................... 3, 24, 30
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Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340 (Fed. Cir.), cert. denied, 543 U.S. 821 (2004) ................................................................................. 21 Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261 (Fed. Cir. 1986)........................ 17 NTP Inc. v. Research in Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005), cert. denied, 126 S.Ct. 1174 (2006) ...................................................................... 7, 9, 11 Phillips Petroleum Co. v. Huntsman Polymers Corp., 157 F.3d 866 (Fed. Cir. 1998) ............................................................................................................. 11 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), cert. denied, 126 S.Ct. 1332 (2006) ....................................................................... passim Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) ......................................................................................................... 7, 11 Rheox, Inc. v. Entact, Inc., 276 F.3d 1319 (Fed. Cir. 2002) ............................................... 5 Rowe v. Dror, 112 F.3d 473 (Fed. Cir. 1997) ..................................................................... 8 SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337 (Fed. Cir. 2001) ............................................................................................................... 3 Sunrace Roots Enter. Co. v. SRAM Corp., 336 F.3d 1298 (Fed. Cir. 2003)....................... 4 Tate Access Floors, Inc. v. Maxcess Techs., Inc., 222 F.3d 958 (Fed. Cir. 2000) .............. 9 Transco Prods. Inc. v. Performance Contracting, Inc., 38 F.3d 551 (Fed. Cir. 1994) ............................................................................................................... 2 Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996) ............................... 3 Watts v. XL Sys., Inc., 232 F.3d 877 (Fed. Cir. 2000) ............................................. 6, 18, 21 Statutes 35 U.S.C. § 112 ................................................................................................................... 2 35 U.S.C. § 112 ¶ 6 ........................................................................................................... 30 Other Authorities 3 CHISUM, CHISUM ON PATENT, § 8.06[1][b][ii] [B] ........................................................ 12 Manual of Patent Examining Procedure § 2111.03..................................................... 12, 13
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Defendants Phelps Dodge Corporation, Phelps Dodge Bagdad, Inc., Phelps Dodge Chino, Inc., Phelps Dodge Morenci, Inc., Phelps Dodge Sierrita, Inc., Phelps Dodge Tyrone, Inc., and Phelps Dodge Miami, Inc. (collectively, "Phelps Dodge") submit their Opening Claim Construction Brief in support of their proposed claim construction of the two patents asserted by Plaintiffs: U.S. Patents No. Nos. 5,005,806 ("the `806 patent" attached as Ex. 2) and 5,030,279 ("the `279 patent" attached as Ex. 3) (collectively, "the patents-in-suit"). Introduction Plaintiffs have alleged that each of the seven Defendants infringe the patents-insuit by using drip irrigation systems in heap leach mining. In heap leach mining, a water-based solution is used to dissolve metal out of ore. The ore used for such leaching operations can be either "run-of-mine" or "crushed." Run-of-mine ore is uncrushed ore that is typically generated by blasting and contains material ranging in size from fine particles to large boulders. Crushed ore, as the name implies, is run-of-mine ore that has been crushed to reduce the size of the larger pieces. Whether run-of-mine or crushed, the ore is typically spread as a bed (sometimes called a heap) and the solution is allowed to trickle through the bed, dissolving out the metals. [See e.g., Ex. 2, `806 patent col.1 ll.31-34, 41-44; Ex. 3, `279 patent col.1 ll.35-39, 45-48; Ex. 4, PD000252-260 (esp. -257), PD000261-267 (esp. -262)] Plaintiffs do not purport to have invented heap leach mining, and their patent claims do not cover the general concept. Rather, the patents disclose and claim a
particular system and method for heap leach mining that uses drip irrigation to apply the leaching solution. More specifically, the patents disclose and claim the use of that particular system and method with "crushed" ore, rather than "run-of-mine" ore. The patents also require, among other things, a particular arrangement of "tubes" to deliver the leaching solution to "emitters," which then emit the leaching solution at "predetermined flow rates" and in "overlapping patterns" into the bed of "crushed" (or
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"granular") ore. The patents also require that the bed of crushed ore be placed on an "impervious pad" to recover the leaching solution.
The two patents are closely related and in fact are essentially identical--each contains the same written description, and each is a continuation of the same parent application. The `806 patent claims the "system" (i.e., the thing or apparatus) of the invention; the `279 patent is a "divisional" of the `806 patent and claims the "method" of claims (a total of 12 claims in the `806 patent and 10 claims in the `279 patent). Argument I. PRINCIPLES OF CLAIM CONSTRUCTION A. Legal Standard
using that "system."1 Both patents have one independent claim and multiple dependent
A valid patent is a bargain between an inventor and the public. In exchange for a limited monopoly to practice an invention, the inventor discloses to the public the details of the invention and the best known method of practicing it. Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 150-51 (1989) ("the ultimate goal of the patent system is to bring new designs and technologies into the public domain through disclosure"). An inventor is required to explain precisely what is included in the claimed invention and what is outside its scope. "A patent holder should know what he owns, and the public should know what he does not." Festo Corp. v Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 731 (2002). For that reason, patent claims must be stated in "full, clear, concise and exact terms." 35 U.S.C. § 112. The public is entitled to rely on the boundaries that a patentee has publicly set for the claimed invention to secure issuance of a patent.
A divisional patent means that its application was "carved out" from another pending application. Transco Prods. Inc. v. Performance Contracting, Inc., 38 F.3d 551, 555 (Fed. Cir. 1994). The divisional patent application must disclose and claim only subject matter contained in the original application. By definition, then both resulting patents are based on an identical written description. Id.
1
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B.
The Claim Construction Process 1. Intrinsic Evidence
The meaning of claim terms in a patent infringement case is exclusively a matter of law for the court to decide. Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996). The primary purpose and most direct result is instructions for the jury, but claim construction also provides a guide for the parties in analyzing validity, infringement and settlement questions. Because of the public nature of a patent, courts look primarily at the public record (the "intrinsic evidence") that was generated when the patent issued. "In most situations, an analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed claim term. In such circumstances, it is improper to rely on extrinsic evidence." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996). There are three kinds of intrinsic evidence: the words of the claims themselves, the specification and the prosecution history of the patent. Id. at 1582-83. a. Claim Terms
To construe claims, courts first look to the words of the claims themselves. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc), cert. denied, 126 S.Ct. 1332 (2006). In fact, the claim construction analysis "begins and ends in all cases with the actual words of the claims." SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1344 (Fed. Cir. 2001). "It is a `bedrock principle' of patent law that `the claims of a patent define the invention to which the patentee is entitled the right to exclude.'" Phillips, 415 F.3d at 1312 (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004).) "The written description part of the specification itself does not delimit the right to exclude. That is the function and purpose of claims." Id. (citation omitted). the meaning that the term would have to "a person of ordinary skill in the art in question Claim terms are generally given their "ordinary and customary meaning," which is
at the time of the invention." Id. at 1312-13 (citation omitted). There is a "`heavy
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presumption' that a claim term carries its ordinary and customary meaning."
CCS
Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted). "In some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words." Phillips, 415 F.3d at 1314. Indeed, the Federal Circuit has "repeatedly stated that claim terms must be given their ordinary and accustomed meaning unless the patent expresses an intention to impart novel meaning to claim terms." Sunrace Roots Enter. Co. v. SRAM Corp., 336 F.3d 1298, 1302 (Fed. Cir. 2003). b. The Specification
The claim language is never read by itself, but is construed in the context of the specification. Phillips, 415 F.3d at 1315. The "ordinary meaning" of a claim term is its meaning to one of ordinary skill in the art "after reading the entire patent." Id. at 1321. Therefore, the specification "is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term." Id. at 1315. Claims "must be construed so as to be consistent with the specification." Id. at 1316. The specification "`acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication.'" Phillips, 415 F.3d at 1321. Consistent with that general principle, our cases recognize that the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess. In such cases, the inventor's lexicography governs. In other cases, the specification may reveal an intentional disclaimer, or disavowal of claim scope by the inventor. In that instance as well, the inventor has dictated the correct claim scope, and the inventor's intention, as expressed in the specification, is regarded as dispositive. Phillips, 415 F.3d at 1316 (emphases added) (citation omitted). c. Prosecution History
In addition to the specification, a court should consider the prosecution history, which includes both the record of proceedings before the Patent Office and the prior art cited during examination of the patent application. Id. at 1317.
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The prosecution history can be useful to demonstrate "how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it otherwise would be." `exclude any interpretation that was disclaimed during prosecution.'" omitted). The prosecution history is also relevant because, under the doctrine of "[p]rosecution history estoppel," when an applicant responds to a rejection by amending the claims, the applicant disclaims the territory between the original claim and the amended claim, and is estopped from later asserting that the surrendered subject matter is equivalent to the claimed subject matter. Festo, 535 U.S. at 733-34, 740-41. Also, where an applicant expressly distinguishes prior art during the patent prosecution process to explain the meaning of the claim, the applicant has disclaimed subject matter inconsistent with his explanation. Rheox, Inc. v. Entact, Inc., 276 F.3d 1319, 1325-26 (Fed. Cir. 2002) (holding that disclaimer made in argument to distinguish prior art is the same as disclaimer in connection with amendment); Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 978-79 (Fed. Cir. 1999); Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 1477 (Fed. Cir. 1998) ("by distinguishing the claimed invention over the prior art, an applicant is indicating what the claims do not cover"). 2. Extrinsic Evidence Id. (emphasis added). The prosecution history will limit the meaning of claim terms "to Id. (citation
After considering intrinsic evidence, a court may properly consider extrinsic evidence, which is all evidence external to the patent and prosecution history, including expert testimony, dictionaries and learned treatises. But extrinsic evidence is less
significant, and reliance on extrinsic evidence as to the proper construction of a term ordinarily is improper. Phillips, 415 F.3d at 1318-19. Extrinsic evidence may never be used to contradict the intrinsic record. Id. Also, as the en banc Phillips decision made clear, courts may not overly rely on dictionaries, because doing so "improperly restricts the role of the specification in claim construction." Id. at 1320. Therefore, generic
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dictionary definitions cannot supersede "art-specific evidence of the meaning" of a claim term. Id. at 1322. 3. Other Claim Construction Principles
Other principles of claim construction can provide guidance as to the meaning of a term. For example, if the same term is used in different claims, it carries the same meaning in each claim, unless clearly indicated otherwise in the intrinsic record. Watts v. XL Sys., Inc., 232 F.3d 877, 883 (Fed. Cir. 2000) ("It is irrelevant in this case whether Watts' prosecution history remarks were directed to claim 18 specifically because there is no clear indication that they were not." (citation omitted)). Also, under the doctrine of claim differentiation, the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim. Phillips, 415 F.3d at 1315. II. DISPUTED CLAIM TERMS All claim terms in dispute appear in claim 1 of the `806, claim 1 of the `279 patent
or claim 6 of the '806 patent. [See Ex. 1 (comparing claims and terms)]. The disputed terms for each patent are either the same as or closely parallel each other. Since the analysis is essentially the same for such like terms, we will address the terms in parallel below. A. In both patents, the Preambles and their terms are claim limitations.
The preambles of Claim 1 of both patents contain essential terms, the meaning of which are in dispute. The relevant portions of the preambles are as follows: Claim 1 of the `806 patent requires: "[A]n ore bed composed of crushed metal-laden ore deposited on an impervious pad." [`806 patent claim 1, col.6 ll.17-18] Claim 1 of the `279 patent requires: "[A]n ore bed composed of granular metal-laden ore positioned on an impervious pad composed of material impervious to liquid." [`279 patent claim 1, col.6 ll.23-25]
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The Parties dispute whether these preambles are claim limitations: Phelps Dodge asserts that they are limitations; Plaintiffs assert that they are not limitations and that the preambles can be ignored. As an initial matter, therefore, the Court must consider whether these preambles are limitations of the claims. NTP Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 130506 (Fed. Cir. 2005) ("a preamble generally limits the claimed invention if it `recites essential structure or steps, or if it is necessary to give life, meaning, and vitality to the claim."), cert. denied, 126 S.Ct. 1174 (2006). Courts must "construe claim preambles, like all other claim language, consistently with [the basic principles of claim construction]." Bell Commc'ns Research, Inc. v. Vitalink Commc'ns Corp., 55 F.3d 615, 620 (Fed. Cir. 1995). The Federal Circuit instructs as follows: If the claim preamble, when read in the context of the entire claim, recites limitations of the claim, or, if the claim preamble is "necessary to give life, meaning, and vitality" to the claim, then the claim preamble should be construed as if in the balance of the claim. . . . Indeed, when discussing the "claim" in such a circumstance, there is no meaningful distinction to be drawn between the claim preamble and the rest of the claim, for only together do they comprise the "claim". If, however, the body of the claim fully and intrinsically sets forth the complete invention, including all of its limitations, and the preamble offers no distinct definition of any of the claimed invention's limitations, but rather merely states, for example, the purpose or intended use of the invention, then the preamble is of no significance to claim construction because it cannot be said to constitute or explain a claim limitation. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999); see also, e.g., NTP, 418 F.3d at 1305-06. composed of crushed metal-laden ore deposited on an impervious pad" (in the `806 patent) and "[a]n ore bed composed of granular metal-laden ore positioned on an Here, there can be no doubt that the preamble language calling for "[a]n ore bed
impervious pad composed of material impervious to liquid" (in the `279 patent) are claim limitations. They do not merely state the purpose or intended use of the invention; the so-called purpose of the invention is expressly stated in the Summary of the Invention:
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"to provide an improved percolation system for heap leach mining." [`806 patent col.2 ll.32-33 (emphasis added)] The plain meaning of the preamble language, in contrast, clearly delineates part of the structure of that percolation system. Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997) ("Where a patentee uses the claim preamble to recite structural limitations of his claimed invention [as opposed to a statement of purpose], the Patent Office and courts give effect to that usage."). More importantly, the preambles here expressly define "ore bed," and provide the antecedent basis for that key term as it is used throughout the rest of the claims. Indeed, the body of the claims specifically and repeatedly refers back to "said ore bed" as claimed method, by referring to `said packet,' expressly incorporate by reference the defined in the preamble.2 Bell Commc'ns Research, 55 F.3d at 1621 ("two steps of the preamble phrase `said packet including a source address and a destination address.'"
2
Claim 1 of the `806 patent (col.6 ll.16-33) reads as follows: A controlled percolation system for heap leach mining over an ore bed composed of crushed metal-laden ore deposited on an i[m]pervious pad comprising supply means for conducting a leaching solution adjacent to said ore bed, . . . directly and collectively emitting said leaching solution . . . into said ore be[d] . . . without projecting . . . above said ore bed . . . .
Claim 1 of the `279 patent (col.6 ll.22-46) reads as follows: A method for percolating a leaching solution in a controlled manner through an ore bed composed of granular metal-laden ore positioned on an impervious pad composed of material impervious to liquid comprising the steps of supplying . . . leaching solution . . . to said ore bed, . . . dispersing said leaching solution across said ore bed . . . emitting said leaching solution . . . into said ore bed . . . without projecting . . . above said ore bed . . . . (emphasis added)
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(emphasis in original)); see also NTP, 418 at 1305 (holding preamble a limitation because it provided antecedent basis for term used in body of claim). A review of the specification further demonstrates that the claim preambles here provide an essential limitation of the invention covered by the respective patents. See Gen. Elec. Co. v. Nintendo Co., 179 F.3d 1350, 1361-62 (Fed. Cir. 1999) (holding preamble may operate as a limitation when it recites additional structure or steps that are underscored as important by the specification). Here, the specification expressly recognizes that heap leach mining can and often is performed on either "run-of-mine" ore
on the one hand, or on "crushed" ore on the other hand. [`806 patent col.1 ll.31-34, 4144] Yet whenever the specification describes the actual invention, it always refers to the use of "crushed" ore. For example: TECHNICAL FIELD. This invention relates . . . to the application of a leaching solution over a bed of crushed metal-laden ore to separate-out a pregnant solution of metals therefrom. [`806 patent col.1 ll.11-14; `279 patent col.1 ll.15-18 (emphasis added)] SUMMARY OF THE INVENTION . . . The controlled percolation system of this invention comprises supply means for conducting a leaching solution adjacent to an ore bed composed of crushed metal-laden ore . . . . [`806 patent col.2 ll.31-40; `279 patent col.2 ll.36-46 (emphasis added)] ABSTRACT. A system for heap leach mining comprises supply and header pipes for conducting leaching solution alongside a bed or "heap" of crushed metal-laden ore deposited on an impervious pad. . . . The system and method of this invention provide numerous advantages over conventional surface spraying systems and methods, including substantial cost savings thereover. [`806 patent & `279 patent Abstract (emphasis added)]3 (below). See Hill-Rom Co. v. Kinetic Concepts, Inc., 209 F.3d 1337, 1341 n.* (Fed. Cir. 2000) ("We have frequently looked to the abstract to determine the scope of the invention."); Tate Access Floors, Inc. v. Maxcess Techs., Inc., 222 F.3d 958, 965 n.2 (Fed. Cir. 2000) ("[I]n determining the scope of a claim, the abstract of a patent is a . . . useful source of intrinsic evidence as to the meaning of a disputed claim term.").
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3
See also, Section II.D.2.
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As the Federal Circuit noted in General Electric, "[i]n light of the specification, to read the claim indiscriminately to cover all types of [ore beds] would be divorced from reality." 179 F.3d at 1362. The specification here is clear: "an ore bed composed of crushed metal-laden ore deposited on an impervious pad" is a requirement of the invention. Finally, the prosecution history confirms that the applicant considered an ore bed of "crushed" or "granular" metal-laden ore on an impervious pad to be an essential part of his invention. Indeed, the applicant expressly argued that the preamble was a
limitation that distinguished his invention from the prior art: "Herndon also fails to suggest the desirability of submerging appellant's tube means beneath an upper surface of an ore bed at an approximate depth of 4.0 in. to 72.0 in., in the manner claimed. In the means plus statement of function [sic] format recited in this claim, and also in light of the claims preamble, the ore bed is deemed a viable and meaningful limitation therein." [Ex. 4, PDA000205 (emphasis added)] "[C]lear reliance on the preamble during
prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation . . . ." Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1370 (Fed. Cir. 2003) (citation omitted). Likewise, in a sworn declaration to overcome a rejection, the inventor (plaintiff Krauth) stated: My invention (herein referred to as the "ORE'MAX" system) includes: A controlled percolation system for heap leach mining over an ore bed composed of crushed metalladen ore deposited on an impervious pad . . . ; and a method for percolating a leaching solution through an ore bed composed of granular metal-laden ore positioned on an impervious pad . . . . [Ex. 4 at PDA000136 (emphasis added)] invention this way throughout prosecution. The applicant repeatedly described the [See, e.g., Ex. 4 at PDA000088-89;
PDA000291; PDA000304-305; PDA000428] See Phillips, 415 F.3d at 1317 ("[A]n invention is construed not only in light of the claims, but also with reference to the file
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wrapper or prosecution history") (quoting Graham v. John Deere Co., 383 U.S. 1, 33 (1966)). term "impervious pad" as used in the preamble. [Ex. 4 at PDA000393] Plaintiffs did not assert that the term could be ignored because it was not a limitation, as they assert now. Instead, they amended the preamble to overcome the rejection. [Ex. 4 at PDA000397-99] Phillips Petroleum Co. v. Huntsman Polymers Corp., 157 F.3d 866, 872-73 (Fed. Cir. 1998) (holding preamble was limitation because examiner considered it one during prosecution); Fantasy Sports Props., Inc. v Sportsline.com, Inc., 287 F.3d 1108, 1118 n.3 (Fed. Cir. 2002) (holding preamble was limitation because applicant "acquiesced" when examiner required preamble to "comply with the written description requirement of 35 U.S.C. § 112."). See also Festo, 535 U.S. at 729, 734 (holding that because of amendments during prosecution, applicant was "estopped from saying that these features are immaterial."). Thus, the preamble must be part of the claims. Of course, this analysis applies with equal force to the `806 patent--terms are construed consistently throughout claims, including in related patents. NTP, 418 F.3d at 1293 ("Because [the asserted] patents all derive from the same parent application and share many common terms, we must interpret the claims consistently across all asserted patents."). To overcome another rejection, the applicant also told the Patent Office that the claimed invention "cannot be used" to practice just any process, but was limited to leaching metal from ore. [Ex. 4 at PDA000275 (emphasis in original)] The prosecution history demonstrates, therefore, that the preamble is a structural limitation, not a mere statement of intended use. Pitney Bowes, 182 F.3d at 1305. Thus the preambles must be part of the claims and interpreted as set forth below. Moreover, the entire `279 patent was rejected during prosecution based on the
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B.
In both patents, the term "Composed of."
Phelps Dodge's Proposed Construction:
that the "ore bed" is limited to the listed materials and that other types of ore are excluded. Supporting Reasons:
"Composed of crushed [granular] metal-laden ore" should be interpreted to mean
completely closed transition phrase (such as the transition phrase "consisting of"), meaning that it "exclude[s] any elements, steps, or ingredients not specified in the claim"; or (ii) mostly closed (such as the transition phrase "consisting essentially of"), meaning characteristics of the claimed [invention]."4 AFG Indus., Inc. v. Cardinal IG Co., 239 F.3d 1239, 1245 (Fed. Cir. 2001); see also In re Bertsch, 132 F.2d 1014, 1019-20 (CCPA 1942) (holding "composed of" means "consisting of," which "exclude[s]" other materials); Manual of Patent Examining Procedure ("MPEP") § 2111.03 (same) (attached "includ[ing]" as proposed by Plaintiffs. as Ex. 7). In no event, however, can "composed of" be interpreted to simply mean
The transition phrase "composed of" is recognized in patent law as either: (i) a
that it "excludes ingredients that would materially affect the basic and novel
Accordingly, the sole question before the Court with respect to the transition phrase "composed of" is whether it should be interpreted as a closed phrase like "consisting of" or a mostly closed phrase like "consisting essentially of." A review of the specification and the understanding of those skilled in the art demonstrates that, in the patents-in-suit, "composed of" is a closed transition phrase and therefore "exclude[s] any elements, steps, or ingredients not specified in the claim." AFG Indus., 239 F.3d at 1245. The terms "consisting of" and "consisting essentially of" are well recognized transition phrases in patent law: "`Consisting of' means the claim covers the recited elements and nothing more"; "consisting essentially of" means the claim "covers the combination with some additional elements but excludes `additional unspecified ingredients which would affect the basic and novel characteristics of the product defined in the balance of the claim.'" 3 CHISUM, CHISUM ON PATENTS, § 8.06[1][b][ii] [B] and [C].
4
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The clause that includes the transition phrase, once again, is the preamble: "an ore bed composed of crushed metal-laden ore deposited on an impervious pad." As discussed in Section II.A. and Section II.D.2. below, the specification expressly delineates the difference between crushed (granular) ore on one hand and run-of-mine ore on the other. The specification also repeatedly and exclusively describes the invention as limited to crushed ore, and the claims expressly limit the invention to ore beds that are "composed of crushed/granular" ore. [See § II.A. (above), p. 9 and § II.D.2. (below), p. 20-21] There is simply no way to read these claims in a manner consistent with the specification to include anything but crushed (granular) ore. Finally, independent expert witness Dr. Martin Kuhn will present testimony demonstrating that there are material differences between leaching run-of-mine ore and leaching crushed/granular ore. [Expert Report of Dr. Martin Kuhn ("Dr. Kuhn Rpt."), Ex. 8, ¶¶ 47-49] Accordingly, "composed of" in this case must "exclude any elements, steps, or ingredients not specified in the claim." Id. at 1245-47. transition phrase "composed of" can mean that "the `ore bed' [merely] includes the listed In any event, there is no authority that supports Plaintiffs' contention that the
materials (`crushed metal-laden ore' [`granular metal-laden ore']) but may include other
materials as well." This proposed construction improperly equates "composed of" with
an open-ended transition phrase meaning that the claim "may cover devices that employ
additional, unrecited elements." AFG Indus., 239 F.3d at 1244-45. "Composed of" is not interpreted that way in patent law. Id.; see also In re Bertsch, 132 F.2d at 1019-20 (holding "composed of" means "consisting of," which "exclude[s]" other materials); MPEP § 2111.03 (same) (attached as Ex. 7).
Indeed, Plaintiffs' construction would lead to absurd results. For example, under Plaintiffs' definition, a small amount of crushed (granular) ore mixed in with large amounts of run-of-mine ore, would meet this claim limitation. The patents, however,
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expressly disclose that heap leach mining can be performed on run-of-mine ore, but exclusively describe the invention as using crushed/granular ore: The term "heap," as used in the art of hydrometallurgy, means a bed of run-of-mine or granular low-grade ore . . . . Gold and silver ores, for example, are run-of-mine or more commonly crushed . . . . [`806 patent col.1 ll.31-33, 41-42; `279 patent col.1 ll.35-37, 1 ll.45-46 (emphasis added)]
Plaintiffs' proposed construction would improperly eliminate this critical distinction. See, e.g., Johnson & Johnston Assocs. v. R.E. Serv. Co., 285 F.3d 1046, 1054 (Fed. Cir. 2002) (en banc) (reversing judgment of infringement: "when a patent drafter discloses but declines to claim subject matter, as in this case, this action dedicates that unclaimed subject matter to the public"). Plaintiffs cannot be permitted to assert patent monopoly rights over technology that was disclosed but expressly not claimed. C. In both patents, the term "Ore bed." Phelps Dodge's Proposed Construction:
The term "ore bed" should be interpreted to mean a pile of ore that has been
spread out and prepared for heap or dump leach mining. Such an ore bed can be placed on top of a previously leached ore bed, resulting in two ore beds. Claim 1 of the `806 patent further requires the "ore bed" to be "composed of crushed metal-laden ore deposited on an impervious pad." Claim 1 of the `279 patent further requires the "ore bed" to be "composed of granular metal-laden ore positioned on an impervious pad composed of material impervious to liquid." Supporting Reasons: pile of ore." Plaintiffs' definition adds "heap," but this is simply redundant. Phelps Dodge's definition is more precise, is consistent with the way the term is used in the patent, and will be more helpful to a jury. Phelps Dodge's definition explains that an ore The Parties' respective constructions are similar. They agree that an ore bed is "a
bed is not just a pile of ore (such as results after blasting), but has been spread out and
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prepared for heap or dump leach mining. Phelps Dodge's definition also clarifies that such an ore bed can be placed on top of a previously leached ore bed, resulting in two separate ore beds, as expressly contemplated in the patents. spread over a prepared surface or `pad'" [`806 patent col.1 ll.31-34; `279 patent col.1 ll.35-38]; and (ii) exclusively depicts such an ore bed in the figures. [`806 and `279 patent figs. 1, 5 & 6] Moreover, the claims themselves expressly call for the stacking of ore beds, creating separate and distinct ore beds: "The system of claim 1 further The specification: (i) defines the ore bed, or heap, as "ore that has been suitably
comprising at least one second ore bed underlying said first-mentioned ore bed, additional ones of each of said plurality of tube means and emitters positioned between said ore beds and means for injecting pressurized air into at least one of said ore beds." [`806 patent, claim 12 col.8 ll.3-8 (emphasis added)] Thus, any construction must
recognize that stacking of ore beds creates separate ore beds, not a single larger ore bed. [See also `806 patent and `279 patent figs. 5, 6 (showing stacked ore beds)] Finally, Phelps Dodge's construction is not only consistent with the claims and the
specification, it is also consistent with the understanding of one of ordinary skill in the art. [Dr. Kuhn Rpt., Ex. 8, ¶¶ 42-44] In contrast, Plaintiffs' proposed construction would treat any pile of ore as a single This is completely
ore bed, even if it is a stack of multiple, separate ore beds.
inconsistent with the claims and the specification. [`806 patent, claim 12; figs.5 & 6] throughout the patent .... [C]laims must be construed so as to be consistent with the
See Phillips, 415 F.3d at 1314, 1316 ("[C]laim terms are normally used consistently specification...."). Plaintiffs' expert, Jackson Jenkins, who asserts that "[c]ollectively, ¶ 11], cannot alter this conclusion. demonstrate that he is incorrect: The system of claim 1 further comprising at least one second ore bed underlying said first-mentioned ore bed, additional ones of each of said plurality of tube means and emitters
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`heap' and `pile' imply a series of lifts constructed over a pad" [Jenkins' Rpt., Ex. 9, at 4 The claims and the specification unequivocally
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positioned between said ore beds and means for injecting pressurized air into at least one of said ore beds. [`806 patent, claim 12 (emphasis added)] FIG. 6 illustrates a further modification and use of the system wherein multiple layers ("lifts") of underlying and previously processed ore beds 11' and 11" are covered with another ore bed 11 . . . . [`806 patent col.5 ll.36-39; `279 patent col.5 ll.42-45] Additional piles or heaps 30 of ore bed 11 can be used to cover header pipes 15, as well as the tube portions and emitters disposed above surface 19. This modified system is particularly useful for the percolation process when ambient temperatures fall below freezing. [`806 patent col.5 ll.30-38; `279 patent col.5 ll.36-41] As used in the patents, two or more stacked ore beds are not a single ore bed. D. The term "Crushed metal-laden ore" in the `806 patent and the term "Granular metal-laden ore" in the `279 patent.
The Parties agree that the terms "metal-laden" and "ore" do not need to be separately interpreted and can be given their ordinary meaning. 1. "Crushed" as used in the `806 patent. Phelps Dodge's Proposed Construction:
"Crushed" ore should be interpreted to mean ore that has been passed through a
mechanical device (called a crusher) to reduce the average particle size to a relatively smaller and more uniform size. Crushed ore is distinct from run-of-mine ore, which is ore removed directly from the mine (often after blasting) and will typically contain particles varying in size from fine particles to large rocks and boulders. Supporting Reasons: "crushed" ore, terms which are well understood in the prosecution history, the specification and the art to describe distinctly different types of ore. importantly, the distinction between "crushed ore" and "run-of-mine ore." Prior art The prosecution history confirms the definition of "crushed" and, more Phelps Dodge's construction critically distinguishes between "run-of-mine" and
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references that the applicant cited to the Patent Office and that are part of the prosecution file state as follows: Today, two basic heap leach cyanidation methods are commercially used: those that use run-of-the-mine ore, and those that use crushed ore. . . . Run-of-mine ore . . . is usually generated by blasting and generally contains ore ranging in size from fines to large boulders. . . . Crushed ore . . . is usually crushed to minus 1 in. or minus ½ in. [Ex. 4, B.M. Clem, Heap Leaching Gold and Silver Ores, PDA00252-260 (at 257)]5 Ores [for heap leaching] can be run-of-mine or crushed to 10 mm. [Ex. 4, PDA000261-267 (at -262)] Indeed, the Patent Office cited references during prosecution that made the same distinction: If the ore is crushed . . . yields as high as 90% may be obtained. Without crushing, yields of 50% of the metal values may be obtained, depending on the run-of-mine size distribution of the ore. [Ex. 4, PDA000043-62 (at -055, col.13 ll.35-39)] With very permeable ores, it may be possible to leach run-ofmine ores . . . . However, with most ores, it will prove beneficial to crush or grind the ore to a fine particle size . . . . [Ex. 4, PDA000065-85 (at -075, col.8 ll.15-20)] See, e.g., Phillips, 415 F.3d at 1317 ("intrinsic evidence" includes "prior art cited during the examination of the patent."); Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1270 (Fed. Cir. 1986) (prior art in the prosecution file is intrinsic evidence that "may be considered by the court in interpreting claim language"); Liquid Dynamics Corp. v. Vaughn Co., 355 F.3d 1361, 1367-68 (Fed. Cir. 2004) (prior art cited can show "what the claims do not cover").
The copy of Clem, Heap Leaching Gold and Silver Ores that appears in the prosecution history is a poor copy and difficult to read. For the Court's convenience, a better copy of this paper is attached as Ex. 5, bearing production numbers PDA002767PDA002775 with the quoted language at PDA002772.
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This distinction is also reflected in the specification: after the ore has been pre-crushed to sufficiently small size to enable the leaching solution to reach the metallic-mineral particles contained in the ore. [`806 patent col.1 ll.38-39; `279 patent col.1 ll.43-45 (emphasis added)] [Ores are] crushed to 40-200 mesh size with recovery increasing with the increased fineness of the crushed ore. [`806 patent col.1 ll.43-44; `279 patent col.1 ll.47-48 (emphasis added)] Moreover, the mine" ore:
patents expressly distinguish between "crushed"/"granular" metal-laden ore and "run-ofThe term "heap," as used in the art of hydrometallurgy, means a bed of run-of-mine or granular low-grade ore . . . . Gold and silver ores, for example, are run-of-mine or more commonly crushed . . . .
[`806 patent col.1 ll.31-33, 41-42; `279 patent col.1 ll.35-37, 45-46 (emphasis added)] While the specification expressly recognizes that leach mining can be performed on both "crushed" and "run-of-mine" ore, it consistently and exclusively describes "the invention" as requiring "crushed" ore, not run-of-mine ore. [See § II.A. (above), p. 9 and
§ II.D.2. (below), p. 20-21] The patentee cannot be permitted to use a clever claims construction to recapture material that he disclosed but absolutely did not claim. See, e.g., Johnson & Johnston Assocs. v. R.E. Serv. Co., 285 F.3d 1046, 1054 (Fed. Cir. 2002) (en banc) ("when a patent drafter discloses but declines to claim subject matter, as in this case, this action dedicates that unclaimed subject matter to the public"); see also Watts, 232 F.3d at 882-83 (holding that when "the invention" or "the present invention" is described as having particular structural limits, the claims are limited to that structure). Finally, "crushed" and "run-of-mine" ore have well understood meanings to a person of ordinary skill in the art: A person of ordinary skill in the art would understand "crushed" ore to be defined as ore that has been passed through a mechanical device (called a crusher) to reduce the average particle size to a relatively smaller and more uniform size.
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In contrast, a person of skill in the art in 1987 would understand "run-of-mine" to be defined as ore removed directly from the mine (often after blasting). Run-of-mine ore will typically contain particles varying in size from fine particles to large rocks and boulders. [Dr. Kuhn Rpt., Ex. 8, ¶¶ 21-22] There is no support in the specification or prosecution history for Plaintiffs' proposed construction: "Suitably-sized pieces of metal-laden ore formed by use of physical force." Indeed, this construction is impossibly broad and would effectively read the word "crushed" out of the claims, bringing within the claims any kind of ore that someone chooses to leach, including "run-of-mine" ore. As explained previously,
however, the specification expressly discloses leaching of run-of-mine ore, but the invention is always described as using only "crushed" ore and the claims expressly call for "crushed" ore. Accordingly, Plaintiffs' construction, which would include run-ofmine ore, cannot be correct. 2. "Granular" as used in the `279 patent. Phelps Dodge's Proposed Construction:
"Granular" should be interpreted to mean crushed, which should be interpreted as If "granular" is given any other meaning, it should be interpreted to mean: fine
indicated above.
and/or fine agglomerated particles of ore no larger than pea size to natural grain size. Moreover, granular material cannot be equated in particle size to run-of-mine, uncrushed or secondary crushed materials, but is closer in size to grains of sand or very small gravel. "Granular" ore is essentially very well crushed "crushed" ore. Supporting Reasons: "crushed," which Phelps Dodge asserts should be interpreted as indicated above. The only distinction offered by Plaintiffs is that "crushed" ore be "formed by use of physical all rock is formed by "physical force." The Parties essentially agree that "granular" should be given the same meaning as
force." That is no distinction, however. Geologic forces are "physical" and, therefore,
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In any event, it should be beyond dispute that in the patents, granular has the same meaning as crushed. Indeed, the patents demonstrate that "granular" means the same thing as "crushed." First, the specification expressly uses "granular" and "crushed" to
mean the same thing. Other than in claim 1 of the `279 patent, the patents-in-suit used the term "granular" just once, in the "Background of the Invention," and in that passage "granular" was used interchangeably with "crushed": The term "heap," as used in the art of hydrometallurgy, means a bed of run-of-mine or granular low-grade ore that has been suitably spread over a prepared surface or "pad" . . . . The ore is normally heaped onto each impervious pad to a depth of ten to thirty feet, after the ore has been precrushed to sufficiently small size . . . . Gold and silver ores, for example, are run-of-mine or more commonly crushed to 40-200 mesh size . . . .
[`806 patent col.1 ll.31-43; `279 patent col.1 ll.35-47 (emphasis added)] See, e.g., Bell Atl. Network Servs., Inc. v. Covad Commc'ns. Group, Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001) (patent can define terms "expressly" or "by implication"). Second, the remainder of the specification confirms that "granular" has the same
meaning as "crushed." While the written description (identical in both patents) expressly acknowledges that heap leach mining can be performed on either run-of-mine or crushed (granular) ore [`279 patent col.1 ll.35-38, 45-48; `806 patent col.1 ll.31-34, 41-44], it also consistently, repeatedly and exclusively defines the "ore" that is used in "the invention" as "crushed." In addition to the Abstract, Technical Field and Summary of the Invention sections quoted in the preamble section (II.A.), above: All figures depict the invention as including "an ore bed composed of crushed metal-laden ore." Figure 1 depicts "an ore bed composed of crushed metal-laden ore," and the remaining Figures (2-6) show perspectives of elements depicted in Figure 1. [`806 patent col.2 l.51-col.3 l.3; `279 patent col.2 l.57-col.3 l.9 (emphasis added)] The remainder of the specification repeatedly and exclusively defines the invention as using an "ore bed of crushed metal-laden ore," or as using "ore bed 11," which is defined as a bed of "crushed" ore. [See, e.g., `806 patent col.3 ll.8-11; 4 l.14; `279 patent col.3 ll.14-17; col.4 l.20]
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Indeed, the specification explains the benefits of "crushed" ore to the invention: Ore is "pre-crushed" to a "sufficiently small size" in order "to enable the leaching solution to reach the metallic-mineral particles contained in the ore." [`806 patent col.1 ll.39-41; `279 patent col.1 ll.43-45 (emphasis added)] "[R]ecovery increas[es] with the increased fineness of the crushed ore." [`806 patent col.1 ll.43-44; `279 patent col.1 ll.47-48 (emphasis added)] The "required time of contact of the leaching solution with the ore bed will be largely determined by the degree of pulverization of the ore . . ." [`806 patent col.5 ll.15-17; `279 patent col.5 ll.21-23 (emphasis added)] "[T]he particle size of the ore" and "the quantity of leaching solution distributed over the bed of crushed ore" are two key factors in the "rate" at which the metals are leached. [`806 patent col.1 ll.49-59; `279 patent col.1 ll.53-63 (emphasis added)]
The Federal Circuit has made it clear that when the specification expressly describes an embodiment as the invention, the claims should be construed as limited in scope to that embodiment. See, e.g., Watts, 232 F.3d at 882-83. Likewise, statements that describe the invention as a whole in a "Summary of the Invention," like those found in the patents-in-suit, "are not limited to describing a preferred embodiment, but more
broadly describe the overall inventions." Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1348 (Fed. Cir.), cert. denied, 543 U.S. 821 (2004). For example, where a patentee described "the implant" in the Abstract and "Summary of the Invention" as "including" or "having" a pleated surface, the claims were interpreted to so limit the invention. C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 860-66 (Fed. Cir. 2004). Similarly, in Watts, the court held that where the specification described only one structure to achieve a "sealing connection" and described "the present invention" as having that particular structure, the claim language was similarly limited. Watts, 232 F.3d at 879-83; see also Gen. Am. Transp. Corp. v. Cryo-Trans, Inc., 93 F.3d 766 (Fed. Cir. 1996) (holding that claims have to be interpreted consistently with the sole embodiment).
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Finally, during prosecution of the patents-in-suit, the applicant repeatedly affirmed that "crushed" and "granular" had the same meaning. As originally filed, the "system" claims (i.e., claims to the thing or apparatus) that ultimately issued in the `806 patent and the "method" claims (i.e., claims to the method of using the system) that ultimately issued in the `279 patent were included in a single patent application. [See Ex. 4, PDA000008-025] As with the `806 and `279 patents, the system claims referred to an [Id. at PDA000022, PDA000024
"ore bed composed of crushed metal-laden ore" and the method claims referred to "an ore bed composed of granular metal-laden ore."
(emphasis added)] During prosecution of the patent applications, however, the applicant repeatedly affirmed that the two terms had the same meaning: "The limitations of claims [to the system] are commensurate with the method step limitations of [the method] claims . . . and thus these claims should be considered accordingly;" [Ex. 4, PDA000162] The "method claims . . . are commensurate in scope to [the system] claims . . . . The patentability of these method claims should be considered accordingly for the sake of brevity." [Ex. 4, PDA000168] "The controlled percolation system is solely and purposely intended for use in the method recited in claims 13-23. Further, the method claims recite steps for using the type of control percolation system recited in claims 1-12 . . . ." [Ex. 4, PDA000275] The specification defines the invention exclusively as using crushed ore. The applicant equated "granular" with "crushed" and instructed the Patent Office that they had the same meaning. Consequently, there can be no dispute that, as used in the `279 patent, "crushed" and "granular" must have the same meaning. If "granular" is given any other meaning, it should be interpreted to mean fine
and/or fine agglomerated particles of ore no larger than pea size to natural grain size. Moreover, granular material cannot be equated in particle size to run-of-mine, uncrushed or secondary crushed materials, but is closer in size to grains of sand or very small gravel. "Granular" ore is essentially very well crushed "crushed" ore. [Dr. Kuhn Rpt., Ex. 8, ¶¶ 26-28]
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E.
In both patents, the term "Impervious pad."
Phelps Dodge's Proposed Construction: This language should be interpreted to mean a built up layer of added material that will not permit the passage of leach solutions under operating pressures into the underlying earth. Supporting Reasons: on "an i[m]pervious pad." Likewise, claim 1 of the `279 patent requires an ore bed composed of granular ore positioned on an "impervious pad," and also includes language to liquid." [`279 patent col.6 ll.25-26; Ex. 4 at PDA000399] Claim 1 of the `806 patent requires an ore bed composed of crushed ore deposited
added during prosecution to emphasize that the pad is "composed of material impervious
The parties' respective definitions are similar, but with key differences. Phelps Dodge's construction recognizes the plain meaning of "impervious pad," which necessarily requires built-up/added material to form the pad. In contrast, Plaintiffs' proposal, "a layer of material supporting an ore bed that prevents the passage of virtually all liquid," would apparently encompasses any "layer of material," including the bare meaning of the word "pad," which clearly indicates that something has been added. The specification confirms this: "The pad is formed as an impervious base, such as by sheets of plastic film (e.g., polyethylene), asphalt and/or compacted clay." [`806 patent col.1 ll.34-37; `279 patent col.1 ll.38-41 (emphasis added)] The pad can be, "in the form of one or more plastic sheets 13 which can be placed over an asphalt or compacted clay base." [`806 patent col.3 ll.12-14; `279 patent col.3 ll.19-21 (emphasis added)] "[T]he pad" can be "situated over uneven terrain." [`806 patent col.2 l.28; `279 patent col.2 l.33 (emphasis added)] ground, as an "impervious pad." Plaintiffs' proposed construction ignores the plain
Also, "[t]he pad is usually sloped with the pregnant solution recovered for subsequent processing by perforated drain pipes or channels positioned on the impervious base, at the `toe' of
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the pad." [`806 patent col.1 ll.44-48; `279 patent col.1 ll.4852] Thus it is clear from the specification that the "impervious pad" is composed of some sort of built up layer of added material. The specification never suggests that the bare ground can be a "pad." The specification does not specifically define "impervious." The plain meaning of "not allowing
the word, however, is clear and confirmed by the dictionary definition relied on by Plaintiffs' own expert: for entrance or passage through:
IMPENETRABLE
the `279 patent uses it twice in Claim 1. [See Ex. 1] The Parties agree that it should have the same construction in all cases, although they do not agree on that construction. Phelps Dodge's Proposed Construction:
The `806 patent uses "communicating" once in claim 1 and twice in claim 6, and
solution from one point to another. As used in the phrase "emitter means attached to and positioned in spaced and communicating relationship along each of said tube" [`806 patent claim 1 (emphasis added)], it means that the emitters are attached to the tube such that liquid inside the tube will flow into the emitters.
"Communicating" should be interpreted to mean allowing the flow of leaching
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Supporting Reasons: which use "communicating" to refer to fluid contact; that is, the flow of leaching solution from one point to another. Indeed, the claims as a whole describe the leaching solution traveling through the tubes, then into the emitters, then out of the emitters "directly and collectively" into the ore be
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