OPINION AND ORDER ON PLAINTIFF'S MOTION FOR RELIEF FROM JUDGMENT
THOMAS C. WHEELER, Judge.
In this patent infringement case, Plaintiff TDM America, LLC (TDM) has filed a motion for relief from judgment under Rule 60(b) of the Court. The patents-in-suit, U.S. Patent Nos. 5,542,614 (the `614 patent) and 5,794,862 (the `862 patent), describe methods for treating dredged and waste materials in a land-based process. TDM contends that contractors for the U.S. Army Corps of Engineers and other federal agencies have infringed these patents in processing and treating contaminated materials for beneficial reuse. Previously, on February 20, 2009, the Court issued its Markman claim construction decision interpreting the disputed claim terms.
TDM appealed the Court's summary judgment decision to the United States Court of Appeals for the Federal Circuit. While the appeal was pending, the Federal Circuit granted TDM's motion to stay the appellate proceedings to allow this Court to consider and rule upon TDM's motion for relief from judgment.
History of Proceedings
TDM filed a complaint on June 21, 2006, and an amended complaint on February 15, 2007 alleging that dredge treatment activities of the United States and its contractors infringed four TDM-owned patents. From the beginning, this case has been vigorously contested, particularly regarding the scope of TDM's discovery, and the large number of disputed claim terms. TDM voluntarily dismissed its claims as to U.S. Patent Nos. 5,007,590 and 6,293,731 (the `731 patent) on October 29, 2008 and April 24, 2009 respectively, but it continues to allege the infringement of claims 1, 2, and 4 of the `614 patent and claims 2, 3, and 4 of the `862 patent. The `862 patent is a continuation of the `614 patent. With TDM's narrowing of the claims, the two dredge treatment facilities at issue are the Claremont Channel Facility (Clean Earth Facility) and the OENJ Cherokee Corporation Facility, both located in New Jersey.
In the February 20, 2009 Markman claim construction decision, the Court addressed the disputed claim terms from three of the patents, the `731 patent, the `614 patent, and the `862 patent. The 23 terms construed in the Markman decision were the following: "processing," "waste material," "vibrating screen box," "vibrating," "dropping," "location below," "mixer," "accumulating a batch," "weighing," "additive," "processing terminus," "homogenizer," "mixing and homogenizing," "preamble," "containment receptacle," "free water," "additive slurry," "mixing container," "pumping," "mixing assembly," "substantially homogeneous material," "curing," and "structural fill material."
Following the Markman proceedings, Defendant moved for summary judgment on June 5, 2009, contending that the treatment processes used at both the Clean Earth and OENJ facilities failed to meet the "batch" and "weighing" limitations contained in all of the asserted claims, and therefore that no infringement of TDM's `614 patent or `862 patent had occurred. On July 16, 2009, TDM responded and filed a cross-motion for summary judgment of infringement. Each of these motions was accompanied by proposed findings of uncontroverted fact and many supporting exhibits. On September 11, 2009, Defendant filed its response and reply brief.
Before filing the final reply brief, TDM moved the Court to stay the action pending the PTO's reexamination of the `614 and `862 patents. In its October 30, 2009 motion, TDM informed the Court that ex parte requests for reexamination had been filed with the PTO. The ex parte requests sought to invalidate the patents based upon prior art that the PTO had not considered during the prosecution of the `614 and `862 patents. On December 8, 2009, the Court denied TDM's motion to stay without prejudice, ordering that the case proceed as to the pending cross-motions for summary judgment. The Court observed:
In the February 20, 2009 Markman decision, the Court provided constructions of the "batch" and "weighing" limitations. The claim language for the "batch" limitation in all of the asserted claims for the `614 and `862 patents reads "accumulating a batch of waste material in the mixer."
Similarly, the claim language for "weighing" in all of the asserted claims for the `614 patent and the `862 patent reads "weighing the batch of waste material to determine an amount of additive to be added to the waste material."
In the summary judgment phase, the Court applied these constructions to the Clean Earth and OENJ processes. The Court concluded that neither of these processes met the "batch" limitation of the patents because the Clean Earth and OENJ processes involved the continuous flow of material.
The PTO's Ex Parte Reexamination of the Patents
On June 5, 2009, an unidentified third party filed with the PTO requests for ex parte reexamination of the `614 and `862 patents. (Pl.'s Ex. C at A20; Pl.'s Ex. D at A379-80.) Pursuant to 35 U.S.C. §§ 301-302 (2006), the requesting party argued that prior art presented substantial questions of patentability of the `614 and `862 patents. (Pl.'s Ex. C at A29-113; Pl.'s Ex. D at A381-475.) The reexamination of both patents focused on the publications and video characterizing the waste treatment process of Chemfix Technologies, Inc. The chief document describing this process was EPA Publication No. EPA/540/5-89/011a entitled "Technology Evaluation Report Chemfix Technologies, Inc. Solidification/Stabilization Process, Clackamas, Oregon, Volume I" (Chemfix II). (Pl.'s Ex. E at A1031-1164.) This publication contains a demonstration and evaluation of the Chemfix process in March 1989, conducted as part of the Environmental Protection Agency's Superfund Innovative Technology Evaluation Program.
On August 21, 2009, the PTO's patent examiner, Joseph A. Kaufman, granted the request for reexamination for all claims in both patents. (Pl.'s Ex. C at A156-72; Pl.'s Ex. D at A508-26.) Thereafter, TDM filed statements in both reexaminations asserting that the cited documents did not present substantial new questions of patentability. (Pl.'s Ex. C at A174-85; Pl.'s Ex. D at A528-41.) On December 8, 2009, the requesting party filed a reply in support of the reexamination of the `862 patent. (Pl.'s Ex. D at A551-65.) In the PTO's proceedings that followed, only TDM met with and made arguments to the patent examiner. See 37 C.F.R. 1.550(g) ("The active participation of the ex parte reexamination requester ends with the reply . . . and no further submissions on behalf of the reexamination requester will be acknowledged or considered.").
The Chemfix II publication describes the Chemfix process as "a mobile, self-contained, continuous processing unit." (Pl.'s Ex. E at A1056.) The "innovative features" include "the continuous nature of the process," allowing waste material to be treated more quickly and inexpensively.
The patent examiner issued his first office action in the reexamination on March 12, 2010. On the `614 patent, the examiner rejected claims 1-4 as obvious based upon the Chemfix II publication. (Pl.'s Ex. C at A195-208.) The examiner observed that the Chemfix II publication "best shows the claimed invention with its clear recitations and figures."
In response to the examiner's rejection of the `614 and `862 patent claims, TDM argued that the Chemfix II publication did not teach or suggest the "batch" or "weighing" limitations. (Pl.'s Ex. C at A214-15; Pl.'s Ex. D at A586-87.) TDM asserted that the Chemfix process is a continuous process, and thus cannot accumulate a "batch." TDM cited references in the Chemfix II publication that describe the process as "a continuous process," "a continuous operation," and "a continuous processing unit."
On July 22, 2010, three PTO examiners conducted an in-person interview with TDM representatives, including its counsel of record in this case, Mr. David Denenberg. (Pl.'s Ex. C at A274; Pl.'s Ex. D at A676.) Three days before this interview, for the `862 patent, TDM submitted an informal statement of issues to be discussed. (Pl.'s Ex. D at A672-73.) As a result of this interview with TDM, the patent examiners reversed their position and determined that the patent claims were valid. The Interview Summary for the `614 patent stated:
(Pl.'s Ex. C at A274.) The Interview Summary for the `862 patent contained similar language, but expressed reservations about claims 2-4:
(Pl.'s Ex. D at A676.)
On August 31, 2010, the examiner issued a Notice of Intent to Issue Ex Parte Reexamination Certificate for the `614 patent. (Pl.'s Ex. C A362-66.) The patent examiners also conducted a telephone interview with TDM representatives on August 31, 2010 to address again claims 2-4 of the `862 patent. Examiner Kauffman's summary of the interview indicates that TDM's arguments were not persuasive and that the rejection of claims 2-4 would be maintained. (Pl.'s Ex. D at A739.) In the September 10, 2010 Advisory Action, examiner Kauffman allowed claims 1 and 5-7 of the `862 patent, but maintained the rejection of claims 2-4 because the claimed "`additive' clearly includes water." (Pl.'s Ex. D at A743-44.) Regarding the allowed claims, the examiner noted that TDM's arguments were persuasive because "Chemfix II does not teach weighing a batch in the mixer. . . ."
(Pl.'s Ex. D at A1025.) Thus, in the course of the lengthy ex parte reexamination process from June 5, 2009 through February 21, 2011, the PTO examiners reversed their initial rejection of the claims in the `614 and `862 patents and ultimately accepted the claims in their entirety. To preserve the validity of its patents, TDM made a 180-degree turn from the patent infringement arguments it made to this Court. The final determination of the patent examiners is consistent with the Court's claim construction, and would not require any alteration to either of the Court's prior decisions.
Discussion
A motion for relief from judgment under Rule 60(b) is "one for extraordinary relief entrusted to the discretion of the Court . . . which may be granted only in extraordinary circumstances."
When seeking relief under Rule 60(b)(2), a party must show "(1) that the evidence was actually `newly discovered,' that is, it must have been discovered subsequent to trial; (2) that the movant exercised due diligence; and (3) that the evidence is material, not merely impeaching or cumulative, and that a new trial would probably produce a different result."
The Court has carefully reviewed TDM's motion and the record of the PTO's ex parte reexamination, and finds that TDM's motion must be denied. Central to the Court's analysis is the fact that the Chemfix II process described in the PTO's ex parte reexamination is very similar to the Clean Earth and OENJ processes challenged in TDM's infringement suit. In reaching its decision that the `614 and `862 patents are valid, the PTO's examiners ruled that the alleged prior art of the Chemfix II process is different from the process described in the patents. As repeatedly shown in the PTO's 1,226-page record, the Chemfix II process is continuous, and therefore does not "accumulate a batch" in the mixer or perform any "weighing" in the mixer. These Chemfix II characteristics are the same as the Clean Earth and OENJ processes, and the reason that the Court found no infringement of TDM's patents.
Patent examiner Kaufman initially ruled that the claims in the `614 and `862 patents were invalid because of the prior art allegations of the Chemfix II process. Ultimately, however, examiner Kaufman and the other PTO examiners reversed course and concluded that the claims in the `614 and `862 patents were valid. The PTO's final position is consistent with this Court's Markman claim construction decision, and with the summary judgment ruling of non-infringement in favor of Defendant. Since the PTO's reexamination position would not alter the outcome of this case, the Court finds that the evidence of the PTO's reexamination is not "material."
Defendant contends that TDM's motion also should fail because it is not based upon "newly discovered evidence." (Def.'s Opp'n, May 24, 2011, at 22.) Specifically, Defendant asserts that the PTO's final determinations on the `614 and `862 patents did not occur until August 31, 2010 and February 21, 2011 respectively, well after the Court's April 27, 2010 summary judgment decision.
TDM argues that the patent examiner is a person of ordinary skill in the art whose construction of the asserted patent claims is entitled to significant weight. Citing
The Court does not disagree with these general guidelines advanced by TDM, but must temper their application in this case. In the 1,226-page appendix, the PTO's examiners made many observations about the Chemfix II process and the validity of the `614 and `862 patents, but in reversing course during the proceedings, the earlier examiner observations are not consistent with the later observations. Thus, in evaluating any of the PTO examiner statements, it is important to know when the statements were made. In its motion for relief from judgment, TDM habitually cites to many of the earlier examiner comments, which were later reversed and thus carry no weight. The final PTO position is consistent with the Court's position, and would not cause the Court to alter the outcome of the case.
The Court also cannot embrace TDM's position because of the contradictory arguments of TDM's counsel before this Court and the PTO examiners. In arguing for patent infringement before this Court, TDM asserted a broad construction of the terms "accumulating a batch" and "weighing" to show that the Clean Earth and OENJ continuous processes infringed upon TDM's `614 and `862 patents. However, in order to preserve the validity of the patents in the PTO's ex parte reexamination process, TDM vigorously argued just the opposite, that "accumulating a batch" and "weighing" had much more restrictive meanings. During the PTO reexamination, TDM had to show that the prior art of the continuous Chemfix II process was different from the `614 and `862 patents. As Defendant points out, by virtue of TDM's arguments before the PTO to save the validity of the patents, TDM should be estopped from claiming any construction broader than the Court's constructions of the "batch" and "weighing" limitations. (Def.'s Opp'n, May 24, 2011, at 27.) Regardless of whether TDM should be subject to estoppel, TDM's unabashed contradictory arguments have diminished TDM's credibility in the eyes of the Court.
Finally, the Court is not enamored with the less than robust procedures followed by the PTO in ex parte reexaminations. After the party requesting reexamination files a reply brief, the requesting party has no further participation in the reexamination proceedings. See 37 C.F.R. 1.550(g) ("The active participation of the ex parte reexamination requester ends with the reply . . . and no further submissions on behalf of the reexamination requester will be acknowledged or considered."). Thus, after December 8, 2009, when the requester filed its reply brief, only TDM and its counsel had interaction with the PTO's examiners. Not surprisingly, the PTO reversed course after these interactions with TDM to confirm the validity of the `614 and `862 patents.
Patent examiners are tasked to give patent claims their "broadest reasonable construction consistent with the specifications."
Conclusion
For the foregoing reasons, TDM's motion for relief from judgment is DENIED. For purposes of the appeal pending before the Federal Circuit, the pleadings relating to TDM's motion, and the exhibits A through G, pages A1-A1226, are hereby added to the Court's record. In accordance with the Federal Circuit's June 2, 2011 Order, the parties are directed to inform the Federal Circuit of this Court's disposition of TDM's motion for relief from judgment.
IT IS SO ORDERED.
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