Case 3:18-cv-00356-EMC Document 217 Filed 08/02/18 Page 1 of 44
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`AUTOMATED PACKAGING SYSTEMS,
`INC.,
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`Plaintiff,
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`v.
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`FREE FLOW PACKAGING
`INTERNATIONAL, INC.,
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`Defendant.
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`Case No. 18-cv-00356-EMC
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`CLAIM CONSTRUCTION ORDER
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`Docket No. 91, 92
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`[Contains Color Images]
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`This patent dispute relates to the air-filled plastic pouches that are placed in packages to fill
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`empty space and protect merchandise. In the parlance of the patents at issue, such pouches are
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`called ―dunnage‖ and the plastic used to form them are called ―webs.‖ Plaintiff Automated
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`Package Systems, Inc. (―APS‖) owns several patents for the design of plastic webs used to form
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`dunnage units and the associated filling processes. APS sells a line of pouches called EZ-Tear
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`Pillows that practice the patents.
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`APS‘s patents fall into two families: the ―Variable Perforation‖ or ―Lerner‖ patents (‗191
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`and ‗288 patents) and the ―Gap-Forming‖ or ―Wehrmann‖ patents (‗220, ‗439, ‗994, and ‗459
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`patents). Broadly speaking, the ―Variable Perforation‖ patents are distinguished by the use of
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`perforations that are shorter on one end of the web but progressively longer toward the other end;
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`the variability facilitates easy separation of the pouches after inflation without the need for a knife.
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`The ―Gap-Forming‖ patents serve the same purpose of easy separation, but rather than
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`perforations, these patents are distinguished by a gap that forms between pouches upon inflation,
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`enabling a worker to insert a hand to separate them.
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`Defendant Free-Flow Packaging International, Inc. (―FPI‖) also sells lines of pouches
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`Northern District of California
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`United States District Court
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`Ex. 1025-0001
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`Case 3:18-cv-00356-EMC Document 217 Filed 08/02/18 Page 2 of 44
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`called Cell-O Green Air, Power Pak‘r, Pro Pak‘r, and Mini Pak‘r cushions. APS accuses FPI‘s
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`product lines of infringing its patents.
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`The parties seek construction of 8 groups of terms, mostly at FPI‘s insistence.1 FPI
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`contends three of the terms are indefinite. The Court construes the terms below.
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`I.
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`LEGAL STANDARD
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`The construction of the terms in a patent claim is a question of law to be determined by the
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`Court. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc),
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`aff’d, 517 U.S. 370 (1996). ―[T]he interpretation to be given a term can only be determined and
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`confirmed with a full understanding of what the inventors actually invented and intended to
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`envelop with the claim.‖ Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (citation
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`and quotation omitted). The ―correct construction‖ will ―stay[] true to the claim language and
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`most naturally aligns with the patent‘s description of the invention.‖ Id. Not every claim term
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`must be construed, but ―[w]hen the parties present a fundamental dispute regarding the scope of a
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`claim term, it is the court‘s duty to resolve it.‖ O2 Micro Int’l Ltd. v. Beyond Innovation Tech.
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`Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008).
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`Claim construction proceeds according to important principles of interpretation. First, ―the
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`claims of a patent define the invention,‖ Innova/Pure Water, Inc. v. Safari Water Filtration Sys.,
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`Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004). The words of a claim are generally given their
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`―ordinary and customary meaning,‖ which is the ―meaning that the term would have to a person of
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`ordinary skill in the art in question at the time of the invention.‖ Phillips, 415 F.3d at 1312-13.
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`―The inquiry into how a person of ordinary skill in the art understands a claim term provides an
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`objective baseline from which to begin claim interpretation.‖ Id. at 1313. Such a person ―read[s]
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`the claim term not only in the context of the particular claim in which the disputed term appears,
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`1 Two terms that were originally selected by the parties have since been dropped. The first,
`―closely spaced such that sides of successive pouches are lightly tacked together for [facile]
`separation,‖ was mooted when APS elected not to pursue infringement of the only claims in which
`the term appeared (‗191 patent claims 6 and 10, and ‗288 patent claims 5 and 9). See Docket No.
`184 (APS‘s preliminary election of asserted claims). The second, ―opposite edge,‖ was withdrawn
`by FPI with the Court‘s leave in favor of the newly added term, ―large perforations,‖ for which the
`Court received supplemental briefing. See Docket Nos. 212 and 213.
`2
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`Ex. 1025-0002
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`

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`Case 3:18-cv-00356-EMC Document 217 Filed 08/02/18 Page 3 of 44
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`but in the context of the entire patent, including the specification.‖ Id.
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`―In some cases, the ordinary meaning of claim language as understood by a person of skill
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`in the art may be readily apparent even to lay judges, and claim construction in such cases
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`involves little more than the application of the widely accepted meaning of commonly understood
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`words.‖ Id. at 1314. In other instances, however, claim language requires interpretation. In
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`construing claim language, the court looks to ―those sources available to the public that show what
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`a person of skill in the art would have understood disputed claim language to mean,‖ including
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`―the words of the claims themselves, the remainder of the specification, the prosecution history,
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`and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms,
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`and the state of the art.‖ Id. (quotations and citations omitted).
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`―[T]he claims themselves provide substantial guidance as to the meaning of particular
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`claim terms.‖ Phillips, 415 F.3d at 1314. The ―context in which a term is used in the asserted
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`claim,‖ ―[o]ther claims of the patent in question, both asserted and unasserted,‖ and ―[d]ifferences
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`among claims‖ are all instructive. Id. ―The claims, of course, do not stand alone‖ and instead
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`―must be read in view of the specification,‖ which is ―[u]sually ... dispositive‖ and ―the single best
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`guide to the meaning of a disputed term.‖ Id. at 1315.
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`Courts ―normally do not interpret claim terms in a way that excludes disclosed examples in
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`the specification.‖ Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1305 (Fed.
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`Cir. 2007). However, in general, ―limitations from the specification are not to be read into the
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`claims.‖ Comark Commc'ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998). That is
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`because ―the purposes of the specification are to teach and enable those of skill in the art to make
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`and use the invention and to provide a best mode for doing so.‖ Phillips, 415 F.3d at 1323. The
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`effect and force of specifications varies. ―[U]pon reading the specification in that context, it will
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`become clear whether the patentee is setting out specific examples of the invention to accomplish
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`those goals, or whether the patentee instead intends for the claims and the embodiments in the
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`specifications to be strictly coextensive.‖ Id.
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`In addition to consulting the specification, ―the court should also consider the patent‘s
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`prosecution history.‖ Markman, 52 F.3d at 980 (citing Graham v. John Deere Co., 383 U.S. 1, 33
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`Northern District of California
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`United States District Court
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`Ex. 1025-0003
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`Case 3:18-cv-00356-EMC Document 217 Filed 08/02/18 Page 4 of 44
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`(1966)). However, because the ―prosecution history represents an ongoing negotiation between
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`the [Patent and Trademark Office] and the applicant,‖ it ―often lacks the clarity of the
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`specification‖ and therefore ―is less useful.‖ Phillips, 415 F.3d at 1317.
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`Though intrinsic evidence—the claims, specification, and prosecution history—is more
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`significant and reliable than extrinsic evidence, courts may also consider the extrinsic record in
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`claim construction, including expert and inventor testimony, dictionaries, and learned treatises. Id.
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`at 1317-18. ―Within the class of extrinsic evidence, . . . dictionaries and treatises,‖ ―especially
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`technical dictionaries . . . can assist the court in determining the meaning of particular terminology
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`to those of skill in the art‖ because they ―endeavor to collect the accepted meanings of terms used
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`in various fields of science and technology.‖ Id. at 1318.
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`Further, expert testimony can ―provide background on the technology at issue, to explain
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`how an invention works, to ensure that the court‘s understanding of the technical aspects of the
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`patent is consistent with that of a person of skill in the art, or to establish that a particular term in
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`the patent or the prior art has a particular meaning in the pertinent field.‖ Id. However,
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`―conclusory, unsupported assertions‖ are not useful, nor should the court accept expert testimony
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`―that is clearly at odds with the claim construction mandated by the claims themselves, the written
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`description, and the prosecution history.‖ Id. (quotation and citation omitted).
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`II.
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`CLAIM CONSTRUCTION
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`With respect to its claim construction arguments, APS frequently cites positions taken by
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`FPI during Inter Partes Review of the patents before the PTO, such as FPI‘s failure to advance the
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`constructions it now proposes. Because this argument is repeated with respect to nearly every
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`claim, the Court addresses it as a threshold question to avoid repetitive analysis below.
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`In short, FPI‘s failure to advance a particular construction during claim construction in IPR
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`proceedings is not probative in these proceedings. In IPR proceedings, the PTO must ―issue a
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`final written decision with respect to the patentability of any patent claim challenged by the
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`petitioner.‖ 35 U.S.C. § 318(a). For purposes of IPR review, the PTO applies ―the broadest
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`reasonable interpretation‖ of a claim term when reviewing patentability; it does not engage in
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`claim construction. In re Cuozzo Speed Tech., LLC, 793 F.3d 1268, 1277 (Fed. Cir. 2015). In
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`Ex. 1025-0004
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`contrast, in the instant patent infringement litigation, the Court must construe the terms of the
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`claim in accordance with a different standard – claim terms are ―generally given their ordinary and
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`customary meaning,‖ which is ―the meaning that the term would have to a person of ordinary skill
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`in the art in question at the time of the invention, i.e., as of the effective filing date of the patent
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`application.‖ Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005). See also PPC
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`Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 747, 756 (Fed. Cir. 2016)
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`(discussing the differences between the ―broadest reasonable construction‖ standard applied in
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`IPR and claim construction under Phillips). Because of these material differences, FPI‘s failure to
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`advance a construction or argue indefiniteness in IPR proceedings is explainable and thus not
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`probative to Markman claim construction. See, e.g., GoPro, Inc. v. C&A Mktg., Inc., No. 16-cv-
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`03590, 2017 WL 3131449-JST, at *5 n.4 (N.D. Cal. Jul. 24, 2017) (agreeing that ―arguments in
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`[a] petition[] for inter partes review . . . that the claims required no construction do not constitute
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`an admission for purposes of the claim construction in the district court litigation‖ because the
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`PTAB ―applies a different standard . . . than this Court‖); JDS Techs., Inc. v. Avigilon USA Corp.,
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`No. 15-cv-10385, 2017 WL 4248855, at *6 (E.D. Mich. Jul. 25, 2017) (holding that arguments in
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`IPR submissions are not relevant to claim construction because ―the USPTO‘s broadest reasonable
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`construction standard of claim construction has limited significance in the context of patent
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`infringement, which is governed by the more comprehensive scrutiny and principles required by
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`Phillips and its progeny‖); Fontem Ventures, B.V. v. NJOY, Inc., No. 14-cv-1645, 2015 WL
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`12766460, at *11 (C.D. Cal. Jan. 29, 2015) (refraining from constructing term based on IPR
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`submission because ―the [IPR] and Phillips standards differ significantly‖).
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`The Court now proceeds to construe the disputed claim terms.
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`A.
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`―edge‖
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`The term ―edge‖ is used in both the Variable Perforation and Gap-Forming patent families.
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`See ‗191 [claims 1-3, 7, 8, 12], 288 [claim 1, 2, 6, 7, 11, 12], ‗220 [claim 1, 2], ‗439 [claim 1, 2, 6-
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`10, 14-20], ‗994 [claim 1], ‗459 [claim 1, 3]. APS advances a construction of ―edge‖ to mean the
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`―line or area farthest from the center.‖ In contrast, FPI argues no construction of the term is
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`necessary, but if the Court proceeds, the plain meaning of the term is ―[t]he line at which a film
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`Ex. 1025-0005
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`Case 3:18-cv-00356-EMC Document 217 Filed 08/02/18 Page 6 of 44
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`surface terminates.‖ Because there is a material dispute between the parties whether an ―edge‖ is
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`only a line or whether it also may include an area, the Court construes the claim term. O2 Micro,
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`521 F.3d at 1362.
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`In these patents, the term ―edge‖ is used to describe, spatially, where the top and bottom
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`layers of the web connect, where the transverse seals extend, and where the longitudinal lines of
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`weakness reach. According to claim 1 of the ‗191 patent, for example:
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`1. A web for the manufacture of fluid filled units
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`comprising:
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`an elongate heat sealable, flattened plastic face and back
`layers including imperforate sections;
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`the layers being imperforately joined together at a side edge
`by a selected one of a fold and a seal;
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`the layers being joined by longitudinally spaced transverse
`seals, each transverse seal extends from the side edge and terminates
`in a spaced relationship with a fill edge of the layers;
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`transverse lines of weakness extending from the side edge to
`the fill edge in a longitudinal direction of the seals that allow
`adjacent pouches to be separated;
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`the side edge and traverse seals and lines of weakness
`together delineating a string of pouches with each pouch having two
`imperforate sections, three imperforate sides and a centrally located
`fill opening at its fourth side and,
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`the transverse lines of weakness being defined by spaced
`perforations extending through both layers with the perforations
`nearest to the fill edge of the layers being shorter in length than the
`lengths of other perforations that are spaced further from the fill
`edge and extend toward the side edge.
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`‗191 Patent, col. 6:42-64 (emphasis added).
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`On its face, the claim language is ambiguous with respect to whether an ―edge‖ can
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`constitute only a line or can also be an area. However, the specification and the accompanying
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`schematics consistently show that an ―edge‖ is more reasonably understood as a ―line.‖ The
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`following schematics are highlighted according to the corresponding specification language to
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`demonstrate this point.2
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`2 These schematics are originally sourced from the patents in question, but the highlighted
`versions were presented by FPI during the claim construction hearing.
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`Ex. 1025-0006
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`Case 3:18-cv-00356-EMC Document 217 Filed 08/02/18 Page 7 of 44
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`In these Figures 5 and 7 of the Variable Perforation patents (‗191 and ‗288) purple side
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`edges [32] are illustrated as lines. Similarly, every edge [20] and [18] in the Gap Forming patents
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`(‗220, ‗439, ‗994, and ‗459) is also illustrated as a line, as demonstrated by the purple and
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`turquoise highlights in Figures 1, 2, 4, 5, 6, 7A, 7B, and 9 below:
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`Northern District of California
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`United States District Court
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`Ex. 1025-0007
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`Case 3:18-cv-00356-EMC Document 217 Filed 08/02/18 Page 8 of 44
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`Arguing otherwise, APS cites only one piece of intrinsic support for its construction of the
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`term ―edge‖ as including an ―area.‖ In particular, the specification for both patent families states
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`that ―[e]ach of the side edges is a selected one of a fold or a seal such that the superposed layers
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`are hermetically connected along the side edges [32].‖ ‗191 Patent at 3:39-42; see also ‗220
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`patent at 3:9. APS contends that a seal must have an area and that, because an edge can consist of
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`a seal, the edge too must have area. Although a seal must have area, even then, the edge can be a
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`line; the seal is ―along‖ a side edge. At best, this point of the specification is ambiguous. In any
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`event, FPI presents credible evidence that, in the context of this patent, a person with ordinary skill
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`Northern District of California
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`United States District Court
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`Ex. 1025-0008
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`Case 3:18-cv-00356-EMC Document 217 Filed 08/02/18 Page 9 of 44
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`in the art would still understand the term ―edge‖ to refer to the particular ―line‖ where the seal
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`terminates—not the whole area of the seal. In particular, the Wehrmann patents illustrate an
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`example of an edge formed by a seal. Yet the specification still distinguishes between the edge
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`[20] (illustrated as a line) and the area of the seal (the space between the edge and the dotted line,
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`highlighted in red):
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`In addition, the specification of the Wehrmann patents states that ―each transverse seal [22]
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`extends from the opposite edge [20] to within a short distance of the inflation edge [18].‖ ‗220
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`Patent at 3:20-21. Yet as illustrated in the magnified figure below, the transverse seal [22] (shaded
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`in blue) extends from the line at which the surface terminates. If APS‘s interpretation that an
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`―edge‖ means an ―area‖ were correct, one would expect the transverse seal [22] to be depicted to
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`start from the dotted line indicating the end of the area of the seal (at the top of the shaded red
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`area), not the line where the surface terminates.
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`This interpretation is confirmed by the fact that, when the patent refers to something other
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`than a seal that reaches the surface‘s outermost limit, it uses different language: it states that the
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`transverse seal [22] extends to ―within a short distance of the inflation edge.‖ Sure enough,
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`―within a short distance of the inflation edge‖ is depicted in Figures 1-2 of the Wehrmann patents
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`as stopping short of the line at which the surface terminates. In the shaded figure below, this is
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`illustrated as the gap between the blue shaded transverse seal [22] and the inflation edge [18].
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`If an ―edge‖ were an ―area,‖ then the specification could simply state ―to the inflation edge‖ rather
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`than ―within a short distance of the inflation edge.‖ Thus, the specifications support the
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`Northern District of California
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`United States District Court
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`Ex. 1025-0009
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`Case 3:18-cv-00356-EMC Document 217 Filed 08/02/18 Page 10 of 44
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`interpretation that the ―edge‖ is the ―line where the surface terminates.‖
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`The strong and univocal intrinsic support for FPI‘s construction of an ―edge‖ as a ―line‖
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`rather than an ―area‖ is bolstered by the extrinsic evidence. In particular, APS cites common
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`dictionary definitions which define an edge as either a ―line‖ or ―area,‖3 but the relevant technical
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`dictionary, the Glossary of Packaging Terms, confirms FPI‘s narrower construction because it
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`defines edge as ―[t]he line formed by the junction of two faces, or of the end and the body wall, of
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`a container or part. The rim of a cylindrical container or tub.‖ FPI Op. Br., Ex. L, at 73. The
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`technical dictionary carries more weight than APS‘s common dictionaries. See Transclean Corp.
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`v. Bridgewood Serv., Inc., 290 F.3d 1364, 1375 (Fed. Cir. 2002) (―[T]o the extent there is a
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`difference between the common and technical meanings of the terms . . . a technical dictionary is
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`[] a better source to inform the meaning of the term to a skilled artisan.‖). Furthermore, FPI‘s
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`expert, Dr. Schueneman, explains that a skilled artisan would understand an ―edge‖ to be a line
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`even when formed by a seal because of the manner in which two-layered film is typically
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`manufactured. See Schueneman Rebuttal Decl. ¶¶ 17-18 (FPI Resp. Br., Ex. 2) (explaining that
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`sealing and folding are alternative methods to create a two-layered film which have no functional
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`difference but may differ in terms of procedural complexity and cost, but in either case, ―the
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`critical feature that must be present to form the side is that the two layers of film must both
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`3 See APS Op. Br., Ex. G (freedictionary.com: defining ―edge‖ as ―The line or area farthest away
`from the middle‖); Ex. H (Merriam Webster: defining ―edge‖ as ―the line where something begins
`or ends; also: the area adjoining such an edge.‖); Ex. I (Webster‘s: defining ―edge‖ as ―the line
`where an object or area begins or ends: BORDER . . . . ; the narrow part adjacent to a border . . . ;
`a point near the beginning or the end‖).
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`Northern District of California
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`United States District Court
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`Ex. 1025-0010
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`

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`Case 3:18-cv-00356-EMC Document 217 Filed 08/02/18 Page 11 of 44
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`terminate and be connected together along a line‖).
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`APS also points to a statement by the patent examiner in the prosecution history regarding
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`another prior art patent, the ―Perkins‖ patent. In rejecting certain claims, the patent examiner
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`stated that transverse seals in the ―Perkins‖ patent ―extend[] from the side edge.‖ APS Op. Br.,
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`Ex. Y, ‗191 Prosecution History, 1/31/2008 Office Action at 2; id., Ex. Z, ‗288 Prosecution
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`History, 2/4/2010 Office Action at 2. In the schematic from the Perkins patent, below, the seals
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`[14] do not touch the very limit of the ―side edge‖ [B], suggesting that the patent examiner
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`possibly understood ―side edge‖ in the Perkins patent to be an area. See APS Op. Br. at 8.
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`Although ―[s]tatements about a claim term made by an examiner during prosecution of an
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`application may be evidence of how one of skill in the art understood the term at the time the
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`application was filed,‖ Salazar v. Procter & Gamble Co., 414 F.3d 1342, 1347 (Fed. Cir. 2005), in
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`this context the Court affords minimal weight to the patent examiner‘s statement, because ―[t]he
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`USPTO‘s broadest reasonable construction standard of claim construction has limited significance
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`in the context of patent infringement, which is governed by the more comprehensive scrutiny and
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`principles required by Phillips and its progeny.‖ JDS Techs., Inc. v. Avigilon USA Corp., No. 15-
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`cv-10385, 2017 WL 4248855, at *6 (E.D. Mich. Jul. 25, 2017). See Cuozzo Speed Tech., LLC v.
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`Lee, 36 S.Ct. 2131, 2145 (2016) (―In an initial examination of an application for a patent the
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`examiner gives the claim its broadest reasonable construction.‖). Furthermore, the patent
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`Ex. 1025-0011
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`Case 3:18-cv-00356-EMC Document 217 Filed 08/02/18 Page 12 of 44
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`examiner‘s statement was made in the context of the specific ―Perkins‖ patent; it does not reflect
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`how a person skilled in the art would understand the meaning of ―edge‖ in the context of the
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`Lerner and Wehrmann patents, particularly in light of the strong evidence in the claim
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`specifications indicating that an ―edge‖ is only a ―line.‖
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`In sum, the intrinsic and extrinsic evidence strongly support FPI‘s construction that ―edge‖
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`in the patents means the ―line where the surface terminates.‖
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`B.
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`―fill edge,‖ ―split edge,‖ ―fill opening at [its/a] fourth side‖
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`The parties also dispute whether the terms ―fill edge,‖ ―fill opening at [the] fourth side‖
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`and ―split edge‖ in the Lerner patents require construction. See ‗191 patent [cls. 1-3, 7, 8, 12];
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`‗288 patent [cls. 1, 6, 7, 11, 12, 14].
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`Both the ‗191 and ‗288 patents describe the ―fill edge‖ and ―split edge‖ respectively in
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`relation to the ―side edge.‖ For example, in the ‗191 patent, the web is formed from a top and
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`bottom layer which are ―imperforately joined together at a side edge,‖ and then ―each transverse
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`seal extends from the side edge and terminates in a spaced relationship with a fill edge of the
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`layers; transverse lines of weakness extending from the side edge to the fill edge in a longitudinal
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`direction of the seals that allow the adjacent pouches to be separated . . . and the transverse lines of
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`weakness being defined by spaced perforations extending through both layers with the
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`perforations nearest to the fill edge of the layers being shorter in length than the length of other
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`perforations that are spaced further from the fill edge and extend toward the side edge.‖ ‗191
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`Northern District of California
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`United States District Court
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`patent at 6:42-64.
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`12
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`Ex. 1025-0012
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`Case 3:18-cv-00356-EMC Document 217 Filed 08/02/18 Page 13 of 44
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`Visually, the ―fill edge‖ of the ‗191 patent is highlighted in blue in the following annotated
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`Figure 5:
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`Northern District of California
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`United States District Court
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`Ex. 1025-0013
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`Case 3:18-cv-00356-EMC Document 217 Filed 08/02/18 Page 14 of 44
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`Similarly, the ‗288 patent, provides that: ―the web is comprised of top and bottom letters
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`―joined at a side edge,‖ with ―longitudinally spaced transverse seals . . . extending from the side
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`edge toward but spaced from a split edge of the layers,‖ with ―longitudinally spaced transverse
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`lines of weakness extending away from the side edge toward the split edge.‖ ‗288 patent at 7:5-16
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`(claim 7) (emphasis added). Visually, the split edge of the ‗288 patent is highlighted in yellow in
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`the annotated Figure 6 below:
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`This ―split edge‖ is alternatively referred to as the ―fourth side,‖ i.e., the side of each pouch
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`near the fill opening. See ‗288 Patent at 6:49-54 (claim 1) (describing a web where ―the side edge
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`and transverse seals together delineat[e] a string of pouches with each pouch having two
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`imperforate sections, three imperforate sides and a fill opening at a fourth side,‖ where the
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`―transverse lines of weakness extend[] away from the fourth side toward the side edge‖).
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`APS argues these terms do not require construction, while FPI argues they should be
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`defined as follows:
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`Ex. 1025-0014
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`

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`Case 3:18-cv-00356-EMC Document 217 Filed 08/02/18 Page 15 of 44
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`
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`
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`fill edge: the ―edge located between the two oppositely oriented strings of
`pouches through which each dunnage unit is filled‖ - ‗191 patent, claims 1-3, 7,
`8, 12
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`fill opening at [its/a] fourth side: ―opening located on the edge located between
`the two oppositely oriented strings of pouches through which each dunnage unit
`is filled‖ ‗191 claim 1, ‗288 claims 1 and 12
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` split edge: the ―edge located between the two oppositely oriented strings of
`pouches through which each dunnage unit is filled and which splits during the
`inflation process‖ ‗288 patent, claims 6, 7, 11, 12, 14
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`The proposed constructions arise from a larger dispute about whether APS‘s patent claims are
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`limited to a two-chain web of pouches, as FPS contends. Because the scope of the terms is
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`disputed, the Court will construe them. O2 Micro, 521 F.3d at 1362.
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`The intrinsic evidence overwhelmingly supports the notion that APS‘s claim is limited to
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`webs with two strings of pouches. The patents state that ―the side edge and transverse seals and
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`lines of weakness together delineat[e] a string of pouches with each pouch having two imperforate
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`sections, three imperforate sides and a centrally located fill opening at its fourth side.‖ ‗191
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`Patent at 6:55-58. As FPI argues, the term ―centrally located‖ must be given meaning, and the
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`only sensible meaning is ―centrally located‖ between two strings of pouches.
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`APS argues that ―centrally located‖ does not refer to transverse centering (i.e., between
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`two strings of pouches) but rather longitudinal centering (i.e., between the two transverse seals
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`that form two sides of a single pouch). But that argument is not persuasive because it contradicts
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`the specification—as APS acknowledged at the hearing, the ―fill openings‖ are depicted at several
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`points along the fill edge/fourth side, not simply a single point centered along the fill edge or
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`fourth side. See Marking 51 in Fig. 6 of the ‗288 patent above.
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`United States District Court
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`Ex. 1025-0015
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`

`

`Case 3:18-cv-00356-EMC Document 217 Filed 08/02/18 Page 16 of 44
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`The specification confirms this interpretation of the claim term ―centrally located.‖ It
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`specifically explains that the nozzle through which the web is inflated must be dragged along the
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`centered position between two strings of pouches:
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`Indeed, the patents‘ ―summary of the invention‖ explains that ―[t]he present invention is
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`embodied in a plastic web‖ for which ―web pouches are inflated and the web is separated into two
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`chains of inflated pouches as the nozzle assembly separates the web along longitudinal lines of
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`weakness.‖ ‗191 Patent at 1:59-2:18 (emphasis added). ―When a patent . . . describes the features
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`of the ‗present invention‘ as a whole, this description limits the scope of the invention.‖ GPNE
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`Corp. v. Apple Inc., 830 F.3d 1365, 1371 (Fed. Cir. 2016). Elsewhere, the ―present invention‖ is
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`illustrated as a two-pouch web:
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`Similarly:
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`Northern District of California
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`United States District Court
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`Ex. 1025-0016
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`

`

`Case 3:18-cv-00356-EMC Document 217 Filed 08/02/18 Page 17 of 44
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`Indeed, the two chains of pouches are claimed as one of the invention‘s benefits, because it
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`permits ―dunnage units [to be] produced at the rate of eight cubic feet per minute.‖ ‗191 Patent at
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`2:30-31. See Barnes & Noble, Inc. v. LSI Corp., No. C-11-2709 EMC, 2014 WL 1365422, at *22
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`(N.D. Cal. Apr. 7, 2014) (―In construing claims, the problem the inventor was attempting to solve,
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`as discerned from the specification and the prosecution history, is a relevant consideration.‖).
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`In short, the ―patent ‗rep