CHEMICAL SEPARATION TECHNOLOGY, INC., et al., Plaintiffs, v. The UNITED STATES, Defendant, 51 Fed. Cl. 771

OPINION ALLEGRA, Judge. Chemical Separation Technology, Inc. (CST) and Sanford M. Stevenson seek compensation from the government, under 28 U.S.C. § 1498(a), for unlawful use of two of their patents. The patents at issue are U.S. Patent No. 5,370,800 (the 800 patent) and U.S. Patent No. 4,749,497 (the 497 patent), both of which relate to the treatment of waste water and are used in a device marketed by CST. In this opinion, the second in this case, the court supplies the rationale for its prior ruling construing the patents and addresses defendant’s various assertions that the patents are invalid. I.

BACKGROUND CST, an Idaho corporation, and its president and major shareholder, Sanford M. Stevenson, are owners of two U.S. patents that relate to the treatment of waste water. The ’497 patent was applied for on August 7, 1987, as a continuation of abandoned application Ser. No. 820,955, originally filed on January 21, 1986. It was granted on June 7, 1988, and issued to CST by virtue of an assignment from the named inventors (Richard S. Kanzleiter, Thomas G. Simonetti, Kenneth E. Ball, and plaintiff Sanford M. Stevenson) recorded in the U.S. Patent and Trademark Office (PTO) on November 2, 1987.

The patent “relates to a method and apparatus for treatment of acidic water and more specifically relates to water treatment of mine drainage.” The ’497 patent is the preferred embodiment of the primary reaction tank used in the method of the second patent at issue, the ’800 patent. The ’800 patent was applied for on May 25, 1993, and granted on December 6, 1994. The patented “method” is used in an apparatus constructed by CST known as a “portable interim treatment system” (PIT System or PITS).

The PIT System, using a series of chemical agents, precipitates and removes hazardous minerals and compounds from acidic mine waste water. A critical feature of the “method,” according to the plaintiffs, is the addition of cationic and anionic polymers to the polluted water, thereby causing the precipitated minerals to clump together (flocculate). On April 14, 1992, CST made a formal offer of sale of a waste water treatment system utilizing the PIT System to Summit-ville Consolidated Mining Company (Summit-ville), a subsidiary of Galactic Resources, Inc. (Galactic).

This offer was accepted by Summitville on April 24, 1992, and a purchase order was signed by an agent of Summitviíle on May 5,1992. A PIT System was installed at the Summitviíle site on July 15,1992. For a short time Galactic utilized the PIT System at the licensed rate, but soon abandoned the site. The PIT System was left in place at Summitville after Galactic abandoned the site. In December, 1992, defendant, through the U.S. Environmental Protection Agency (EPA), began an emergency Superfund response action at the Summitviíle site.

An outside firm, the Environmental Chemical Company (ECC) was retained to serve as the emergency response contractor to manage the clean-up of the site. The clean-up included treatment of waste water, which ECC accomplished using the PITS already installed at the site. In 1993, ECC issued a request for proposals seeking contract bids for enhancing the capacity of the PIT System. CST submitted a proposal, but ECC chose not to award the contract and performed the work on the PIT System itself. On January 13, 1997, plaintiffs brought suit claiming that: (

i) ECC performed this enhancement, a modification that resulted in an operation of the PIT System at an unlicensed rate; (ii) defendant allowed ECC to perform this work without a license; and (iii) defendant has continued to use plaintiffs’ patents without license since 1993. Plaintiffs’ complaint seeks compensation for the allegedly unlawful use of their patents pursuant to 28 U.S.C. § 1498 and the takings clause of the Fifth Amendment. On April 28, 1999, defendant responded to the claim of infringement by filing a motion for partial

summary judgment, asking this court to declare the ’800 patent invalid due to plaintiffs’ violation of the on-sale doctrine enunciated in 35 U.S.C. § 102(b). By order dated December 14, 1999, this court found that material questions of fact remained regarding whether the “invention later claimed” was on sale before the critical date. Subsequently, the parties raised issues concerning the construction of the patents in question and defendant raised additional assertions regarding the validity of the ’497 and ’800 patents.

The court conducted a Markman hearing in this case on November 7, 2000, and November 13-14, 2000. On November 14, 2000, the court orally ruled on the issues involving the construction of the patents, reserving for this order an explanation of the reasoning for its various constructs. On November 15-17, 2000, the court conducted trial concerning the factual issues raised in defendant’s various assertions that the patents in question were invalid. Following post-trial briefs, closing arguments in this case were heard on June 29, 2001.

Currently, there are two overarching issues before the court: The first, stemming from this court’s oral ruling of November 14, 2000, involves explaining the rationale for this court’s construction of the patents in question. The second involves the various assertions defendant has made concerning the validity of the patents. The court will consider these broad issues seriatim. II. CLAIM CONSTRUCTION Determination of claim construction, including the terms of art found therein, is a matter of law for the court to decide. Markman v.

Westview Instruments, Inc., 52 F.3d 967 (Fed.Cir.1995) (en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). The Federal Circuit has instructed that, “when construing a claim, a court should look first to the intrinsic evidence, ie., the claims themselves, the written description portion of the specification, and the prosecution history.” Bell & Howell Document Management v. Altek Sys., 132 F.3d 701, 705 (Fed.Cir.1997). “The starting point for any claim construction must be the claims themselves.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed.Cir.1999).

Generally, a claim is given its ordinary and customary meaning; that is, the meaning given to it by those skilled in the art. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996); Estate of Wicker v. United States, 43 Fed.Cl. 172, 176 (Fed.Cl.1999). However, “it is always necessary to review the specification to determine whether the inventor has used any terms in a manner inconsistent with their ordinary meaning.” Northern Telecom, Ltd. v. Samsung Electronics Co., Ltd., 215 F.3d 1281, 1293 (Fed.Cir.2000) (quoting Vitronics Corp., 90 F.3d at 1582); see also Zoltek Corp. v.

United States, 48 Fed.Cl. 290, 292 (Fed.Cl.2000). Further, “[t]he prosecution history is often helpful in understanding the intended meaning as well as the scope of technical terms, and to establish whether any aspect thereof was restricted for purposes of patentability.” Vivid Technologies, Inc. v. American Science & Engineering, Inc., 200 F.3d 795, 804 (Fed.Cir.1999); see also Masco Corp. v. United States, 47 Fed.Cl. 449, 452 (Fed.Cl.2000).

Summarizing, the Federal Circuit, in its own watershed decision in Markman, stated: “To ascertain the meaning of claims, we consider three sources: The claims, the specification, and the prosecution history.” Markman v. Westview Instruments, Inc., 52 F.3d at 979; see also Bell & Howell Document Management v. Altek Systems, 132 F.3d at 706.

After considering this intrinsic evidence, the court may also “consult trustworthy extrinsic evidence to ensure that the claim construction it is tending to from the patent file is not inconsistent with clearly expressed, plainly apposite, and widely held understandings in the pertinent technical field.” Pitney Bowes, 182 F.3d at 1309. “Extrinsic evidence consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises.” Markman, 52 F.3d at 980; see also Eastman Kodak Co. v.

Goodyear Tire & Rubber Co., 114 F.3d 1547, 1552 (Fed.Cir.1997). However, “[e]xtrinsie evidence may not be relied upon during claim construction when the intrinsic evidence unambiguously defines the disputed claim language.” Personalized Media v. Int’l Trade Comm’n, 161 F.3d 696, 706 (Fed.Cir.1998). Further describing the limited role such evidence plays, the Federal Circuit has indicated that “[e]xtrinsic evidence is to be used for the court’s understanding of the patent, not for the purpose of varying or contradicting the terms of the claims.” Markman, 52 F.3d at 981 (citing U.S. Indus. Chems., Inc. v.

Carbide & Carbon Chems. Corp., 315 U.S. 668, 678, 62 S.Ct. 839, 86 L.Ed. 1105 (1942)); see also Fike Corp. v. United States, 41 Fed.Cl. 776, 782 (1998). As noted above, on November 14, 2000, at the conclusion of the Markman hearing in the instant case, and before initiation of the trial on the validity issues presented herein, the court orally ruled on all but one of the claim construction issues presented by the parties.

While defendant initially raised dozens of issues concerning the construction of the patents, disputes as to five claims eventually predominated: two regarding the ’497 patent and three regarding the ’800 patent. The court will discuss the rationale for its prior rulings on these claims first before turning to the construction of the other claims which remain disputed. A. The ’497 patent Claim 1 of the ’497 patent reads: 1.

A water treatment apparatus comprising, a reaction vessel, a source of acidic or metal-bearing water, influent pipe means operatively connected to said reaction vessel for delivering said water to be treated from said water source to said reaction vessel, aerator means having a shaft extending therefrom into said reaction vessel said shaft having a discharge end for discharging oxidant, said aerator means having an agitation means, said influent pipe means disposed generally adjacent to the discharge end of said aerator shaft, a neutralizing agent feed line means leading from neutralizing supply means into said reaction vessel for delivering neutralizing agent, said neutralization feed line means operatively associated with said aerator shaft such that a discharge end of said neutralizing agent feed line is positioned generally adjacent to said agitation means, pump means operatively associated with said reaction vessel, power source means operatively associated with said reaction vessel for energizing said apparatus, effluent discharge pipe means operatively connected to said reaction vessel for discharging the water, and automated metering and control means for delivering said neutralizing agent into said reaction vessel through said neutralizing agent feed line means and oxidant from said aerator means at substantially the same time, whereby said oxidant impinging upon the water entering said reaction vessel will aerate said water and establish mixing therein so as to enhance efficiency of distribution of said neutralizing agent in said water to reduce reaction time and enhance efficiency of said reaction.

The parties disagreed as to the construction of two critical aspects of claim 1 of the ’497 patent (the two highlighted above). The resolution of those disagreements is as follows: 1. Claim 1: “influent pipe means.” Based solely on its review of the intrinsic evidence, the court concluded that the associated structure for this means-plus-function were influent conduit 9 and conduit 18 in Figure 3 of the patent. While defendant agreed that this element is a means-plus-function, it asserted that the associated structures for this function included not only items 9 and 18 of the patent, but also conduits 21 and

Section 112, paragraph 6 of the Patent Act permits the use of mean-plus-function language: An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. 35 U.S.C. § 112 116 (1994). Under this section, the device must perform the identical function as specified in the claims of the patent in suit. King Instruments Corp. v.

Perego, 65 F.3d 941, 945-46 (Fed.Cir.1995), cert. denied, 517 U.S. 1188, 116 S.Ct. 1675, 134 L.Ed.2d 778 (1996). Regarding such means-plus-functions, the Federal Circuit has held that, in the absence of other claim language that restricts the scope of the claim, the means or steps described exclusively in functional terms are to be construed to cover the corresponding structures described in the specification for performing that function and equivalents thereof. In re Donaldson Co., 16 F.3d 1189, 1193 (Fed.Cir.1994) (en banc); see also Pfund v. United States, 40 Fed.Cl. 313, 326 (1998).

Under claim 1, the “influent pipe means” is designed to “deliver [the metal-bearing] water to be treated from said water source to said reaction vessel.” A review of the accompanying Figure 3, reveals that the only two items which perform this function are in-fluent conduit 9 and conduit 18. According to the description of the preferred embodiment, conduit 21 contains aerator shaft 15 and extends down from the aerator motor 6. Contrary to defendant’s claim, this item thus is not involved in delivering the water to be treated from the water source to the reaction vessel.

The same can be said of conduit 22, which, under the description of the preferred embodiment, does not bring the waste water into the reaction tank, but rather sends a mixture of the waste water, the oxidant and the caustic agent to another area of the reaction vessel, one that may contain internal baffles. Accordingly, the court agrees with plaintiffs that the “influent pipe means” corresponds only to items 9 and 18 in Figure 3 of the patent. 2.

Claim 1: “whereby said oxidant impinging upon the water entering said reaction vessel will aerate said water and establish mixing therein so as to enhance efficiency of distribution of said neutralizing agent in said water to reduce reaction time and enhance efficiency of said reaction.” In its oral ruling, the court held that this element was definite and that the “reaction” referred to is the introduction of waste water, neutralizer, oxidant and agitation.

Defendant argued that this element is indefinite, asserting that the last two elements thereof, beginning with the phrase “enhance efficiency of ...,” are particularly “opaque.” It asserted that no “said reaction” is defined in the claim and that it is unclear how the claimed invention “enhances” the “efficiency of distribution of said neutralizing agent.” Regarding whether a patent is sufficiently definite,

section 112, paragraph 2 of the Patent Act prescribes: “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” 35 U.S.C. § 112, H 2 (1994). Whether a claim is indefinite under this paragraph is a question of law. Personalized Media Communications, LLC v. Int’l Trade Comm., 161 F.3d at 702-03 (citing North Am. Vaccine, Inc. v.

American Cyanamid Co., 7 F.3d 1571, 1579 (Fed.Cir.1993)). “The test for definiteness is whether one skilled in the art would understand the bounds of the claim when read in light of the specification. If the claims read in light of the specification reasonably apprise those skilled in the art of the scope of the invention, § 112 demands no more.” Miles Labs., Inc. v. Shandon Inc., 997 F.2d 870, 875 (Fed.Cir.1993) (internal citations omitted), cert. denied, 510 U.S. 1100, 114 S.Ct. 943, 127 L.Ed.2d 232 (1994). Burnishing this explanation, the Federal Circuit, in Exxon Research and Engineering Co. v.

United States, 265 F.3d 1371 (Fed.Cir.2001), recently stated: In determining whether that standard is met, .., we have not held that a claim is indefinite merely because it poses a difficult issue of claim construction.... Under a broad concept of indefiniteness, all but the clearest claim construction issues could be regarded as giving rise to invalidating indefiniteness in the claims at issue. But we have not adopted that approach to the law of indefiniteness; rather, what we have asked is that the claims be amenable to construction, however difficult that task may be.

If a claim is insolubly ambiguous, and no narrowing construction can properly be adopted, we have held the claim indefinite. If the meaning of the claim is discernible, even though the task may be formidable and the conclusion may be one over which reasonable persons will disagree, we have held the claim sufficiently clear to avoid invalidity on indefiniteness grounds. Exxon, 265 F.3d at 1375 (citation omitted).

The court further noted that “[b]y finding claims indefinite only if reasonable efforts at claim construction prove futile, we accord respect to the statutory presumption of patent validity, .., and we protect the inventive contribution of patentees, even when the drafting of their patents has been less than ideal.” Id. (citations omitted); see also Athletic Alternatives, Inc. v. Prince Mfgr., Inc., 73 F.3d 1573, 1581 (Fed.Cir.1996).

Applying these root principles, the court finds that one skilled in the art would understand that the “reaction” referred to in this element is the introduction of waste water, neutralizer, oxidant and agitation. Several pieces of intrinsic evidence support this construction.

First, the element under consideration itself describes the reaction as involving the “oxidant impinging upon the water entering said reaction vessel, thereby “establishing] mixing therein so as to enhance efficiency of distribution of said neutralizing agent in said water.” Further evidence that this, indeed, is the “reaction” referred to in the claim may be found in the

summary of the invention, which states that an “object of the invention is to maximize treatment of the water by introducing the neutralizing agent and the oxidant at the same point in the water system simultaneously.” Moreover, the description of the preferred embodiment indicates: The apparatus is connected to a source of the raw water, such as a stream.... A caustic substance is injected into the system which neutralizes the acid in the water. At generally the same point, an aerator introduces oxidant into the influent flow stream.

The neutralization means and aerator means are in generally close proximity and oriented in generally the same axial position. The flow stream experiences substantially instantaneous elevation of pH and the oxidation rate required for treatment is thereby greatly accelerated.

Finally, emphasizing that the reaction associated with this claim involves both the introduction of the neutralizer and the oxidant, as well as agitation, the specification indicates that where the treatment contains internal baffles, such baffles “allow for mixing, turbulence increasing and extended contact time,” and are designed to “insure that the treatment reactions are complete prior to discharge from the reaction vessel.” Accordingly, while defendant argues that it is unclear whether the reaction described involves either neutralization or oxidation, the intrinsic evidence associated with the patent leaves no doubt that both subproeesses are involved.

Because, in the court’s view, one skilled in the art would understand what was meant by the claim’s reference to “said reaction,” the court also readily deduces that the patent is not indefinite to the extent it claims a process to “enhance [the] efficiency of distribution of said neutralizing agent.” To a certain extent, the meaning of this phrase is bound up with the meaning of the last phrase in this same element, which indicates that the process is designed to “enhance [the] efficiency of said reaction.” Regarding this latter point, the patent describes how it more efficiently treats the waste water, articulating in the specification that: The simultaneous introduction of the air, water and the chemical in a regulated manner accelerates the reaction time.

Because of this instantaneous reaction time, large bulk mixing and reaction chambers are not needed. To like effect is the

summary of the invention, which discloses that “[i]t is a further object of the invention to maximize treatment of the water by introducing the neutralizing agent and the oxidant at the same point into the water system simultaneously.” Consistent with this intrinsic evidence, it appears that the apparatus enhances the efficiency of the distribution of the neutralizing agent through aerating and agitating the waste stream at the same time that the neutralizer is being introduced.

Ultimately, defendant relies upon extrinsic evidence — the testimony of its expert — to support its assertion that this element of the claim is indefinite. However, as noted above, it is axiomatic that extrinsic evidence may not be relied upon where intrinsic evidence unambiguously defines disputed claim language. See Kopykake Enterprises, Inc. v. The Lucks Co., 264 F.3d 1377, 1381 (Fed.Cir.2001); Pall Corp. v. Micron Separations, Inc., 66 F.3d 1211, 1216 (Fed.Cir.1995), cert. denied, 520 U.S. 1115, 117 S.Ct. 1243, 137 L.Ed.2d 326 (1997).

As a corollary to this rule, the Federal Circuit has repeatedly proclaimed that extrinsic evidence may not be employed to create ambiguity not found in the patent. See, e.g., Interactive Gift Exp., Inc. v. Compuserve, Inc., 256 F.3d 1323, 1334 (Fed.Cir.2001) (“[g]iven the lack of ambiguity in the intrinsic evidence, it would be improper to address any of the parties’ arguments relating to extrinsic evidence”); Vitronics, 90 F.3d at 1583 (“In those cases where the public record unambiguously describes the scope of the patented invention, reliance on any extrinsic evidence is improper.”).

Honoring these tenets, this court rejects defendant’s attempt to inject ambiguity into the patent’s language through the use of extrinsic evidence. The disputed language is not indefinite. B. The’800 Patent Claim 1 of the ’800 patent reads: A method of removing metal compounds selected from iron, manganese, aluminum, zinc, copper, lead, arsenic and chromium from waste water comprising the steps of: (

a) adjusting the pH of the waste water to from about 5 to about 12; (

b) aerating the waste water; (

c) agitating the waste water, where steps (a), (

b) and (

c) are carried out simultaneously in a reaction tank and waste water is aerated in said reaction tank to provide a dissolved oxygen concentration at from about 0.01 lb./hr. to about 70 lbs./ hr. at a waste water input flow rate of from about 50 gal./min. to about 500 gal. /min. for a metals concentration of from about 50 mg./l. to about 1,000 mg./l.; (

d) then adding a flocculating agent polymer selected from a group consisting of cationic and anionic polymers to the water and allowing floccules including said metal compounds to form; and (

e) then separating said floccules including said metal compounds from the water. The parties disagreed as to the construction of three critical aspects of Claim 1 of the ’800 patent (the three highlighted phrases above). The resolution of those disagreements is as follows: 1. Claim 1: “Removing.” In its oral ruling, this court construed the phrase “removing” to mean “to take away or eliminate.” Defendant noted that the claim recites no particular removal percentage or standard.

It argued that, in such circumstances, it is neither reasonable to construe the claim as indicating that the listed metals will be entirely removed nor to construe it as indicating that only a trivial amount of these metals would be removed. Based on references to EPA limits in the patent’s specifications, defendant concluded, therefore, that the term “removing” must mean “removing to below the appropriate EPA permitted limit.” Words in a patent are given their ordinary meaning unless it is clear that the patentee intended to use them differently. National Recovery Technologies v.

Magnetic Separation Systems, 166 F.3d 1190, 1195 (Fed.Cir.1999); see also Gentex Corp. v. Donnelly Corp., 69 F.3d 527, 530 (Fed.Cir.1995) (“Words in claims are to be given their ordinary meaning in the absence of indication in the patent to the contrary.”). In the court’s view, “removing” is used in the patent in its ordinary sense — two accepted dictionary

definitions for the word “remove” are “to take away; withdraw” and “to do away with; eliminate.” See The American Heritage Dictionary of the English Language 1476 (4th ed.2000). While, in limited circumstances, a patentee may “be his own lexicographer,” Vitronics, 90 F.3d at 1582, no special definition of the term “removing” is apparent in any of the intrinsic evidence relating to the patent. See Vivid Technologies, Inc., 200 F.3d at 805.

In an effort to force-feed its limiting definition of “removing,” defendant focuses on language in an example following the specifications which states that “[w]ater leaving the polishing pond consistently had a metal ion concentration below EPA permitted limits.” That this example involved a situation in which the effluent “consistently” had concentrations below EPA limits does not mean, however, that the patented method was to ensure that all effluents would always meet such limits.

To the contrary, the Federal Circuit has underscored that, “[w]hile ... claims are to be interpreted in light of the specification and with a view toward ascertaining the invention, it does not follow that limitations from the specification may be read into the claims.” Sjolund v. Musland, 847 F.2d 1573, 1581 (Fed.Cir.1988). Indeed, in an earlier case, that court similarly cautioned against “limiting the claimed invention to the preferred embodiments or specific examples in the specification.” Texas Instruments, Inc. v. U.S.

Int'l Trade Comm’n, 805 F.2d 1558, 1563 (Fed.Cir.1986); see also Ethicon Endo-Surgery, Inc. v. United States Surgical Corp., 93 F.3d 1572, 1578 (Fed.Cir.1996); Prochroma v. United States, 46 Fed.Cl. 750, 755 (Fed.Cl.2000). Based on this precedent, and defendant’s failure to produce clear and convincing evidence to the contrary, the court refuses to read a limitation into the claim based upon an isolated example in the specification. 2.

Claim 1: “Adjusting the pH of the water to from about 5 to about 12.” In its oral ruling, the court held that this portion of claim 1 is not indefinite and that it refers to “bringing to a pH point within the range specified that optimizes the precipitation of metals, said point to be determined by reasonable experimentation.” Defendant had advanced that the use of the term “about” rendered this claim indefinite because it fails adequately to apprise the public of the upper and lower limits of the range — limits that allegedly are discernible neither from the specification, prosecution history, nor prior art.

Defendant charged that the patent does not give an indication how far below a pH of 5 or above a pH of 12 a user may go without infringing. In response, plaintiffs argued that the range specified is as precise as the art allows. Defendant relies heavily on snippets plucked from Amgen, Inc. v. Chugai Pharmaceutical Co., Ltd., 927 F.2d 1200 (Fed.Cir.1991), cert. denied, 502 U.S. 856, 112 S.Ct. 169, 116 L.Ed.2d 132 (1991), a case that involved a patent for DNA sequences.

There, the Federal Circuit affirmed the district court’s ruling that the term “at least about 160,000” international units per absorption unit (IU/AU) was indefinite. Adopting the district court’s reasoning, the Federal Circuit held the claims invalid because the term “about” failed to advise one skilled in the art of the “mean value” between the prior art value of 128,620 IU/AU and the “mean specific activity level of 160,000” that would constitute infringement. Id. at 1218.

Critically, the court noted that the “at least about 160,000” language was added after the examiner rejected “at least 120,000,” which the examiner found was anticipated by the prior art. Id. at 1218. However, the Federal Circuit stated that, given this prosecution history, the claims would also be invalid without the limitation of “about” and cautioned that its ruling “should not be understood as ruling out any and all uses of this term in patent claims.” Id. at 1218.

Thus, contrary to defendant’s intimations, Amgen expressly rejects the sweeping proposition that use of the term “about” renders a claim per se indefinite. As further evidence of this, various cases have held claims employing this language to be definite. They teach that the “determination of the ‘technological scope’ that should be given to the term ‘about’ is dependent on the context of the use of the term and the precision or significance of the measurements used.” Zoltek Corp., 48 Fed.Cl. at 300; see also Eiselstein v.

Frank, 52 F.3d 1035, 1040 (Fed.Cir.1995) (“[t]he meaning of the word ‘about’ is dependent on the facts of a case, the nature of the invention, and the knowledge imparted by the totality of the earlier disclosure to those skilled in the art”); Modine Mfg. Co., 75 F.3d at 1554. As noted in a leading treatise: The use of the term ‘about’ permits some leeway in the amount of a required constituent in a claim. Such broadening usages as ‘about’ must be given reasonable scope; they must be viewed by the decision maker as they would be understood by persons experienced in the field of the invention.

Although it is rarely feasible to attach a precise limit to ‘about,’ the usage can usually be understood in light of the technology embodied in the invention. Robert L. Harmon, Patents and the Federal Circuit § 5.6(

b) at p. 251 (5th ed.2001) (hereinafter Harmon). As such, the term “about” must be given a reasonable scope and be viewed by this court as it would be understood by persons skilled in the field of the invention. Modine, 75 F.3d at 1554 (citing Andrew Corp. v. Gabriel Electronics, Inc., 847 F.2d 819, 821-22 (Fed.Cir.1988)). Unlike the case in Amgen, the pH range specified in the ’497 patent was not designed to distinguish this patent from prior art.

As such, in the context of this patent, questions such as whether a pH of 4.5 is “about 5” focus solely on what an individual skilled in the art would consider an approximate of 5 in the context of the pH scale, and, more broadly, a waste water treatment method.

And what one skilled in the art would consider to be “about 5” in the context of that scale, in which each increasing number represents an order of magnitude, might vary considerably from what that same individual would view as being “about 5” on a scientific scale in which the units of measurement were different (e.g., the Moh scale or the Richter scale).

That there inevitably is this variation from scale to scale, however, does not render the claim here indefinite, as illustrated by the fact that the Federal Circuit has, on several occasions, construed the scope of a range of “about” numbers in determining whether a patent was infringed. See, e.g., Conopco Inc. v. May Dep’t Stores Co., 46 F.3d 1556, 1561 (Fed.Cir.1994), cert. denied, 514 U.S. 1078, 115 S.Ct. 1724, 131 L.Ed.2d 582 (1995).

Indeed, given that this patent prescribes a method for dealing with a wide range of contaminated waste water streams, some imprecision in the actual range of pH necessary to precipitate out the contaminants seemingly would be anticipated by one skilled in the art — a point ultimately confirmed by expert testimony in this case. 3.

Claim 1: “aerated in said reaction tank to provide a dissolved oxygen concentration at from about 0.01 lb./ hr. to about 70 lbs./hr.” This court ruled that this language, considered in conjunction with that portion of the claim that recites gallonage and milligram ranges, refers to a rate of aeration and that the ranges so specified were not intended as limitations on the patent. This court thereby rejected defendant’s assertion that this language was indefinite. To be sure, the disputed language is not a picture of clarity.

It might be viewed as referring to a particular oxygen concentration or as indicating that the aerator should possess a particular rating — references in the specifications, indeed, suggest both

interpretations. But, the

interpretation that makes the most sense, and which is most consistent with the intrinsic evidence, as a whole, is that the language refers to a rate of aeration. Thus, the detailed description of the patent indicates that “[t]he rate of aeration would normally be from about 0.01 lbs./hr. to about 70 lbs./hr. for a metals concentration of 50 mg.A. to 1,000 mg.A. at a raw water input flow rate of 50 gal./min. to 500 gal./min.” This language in the specification tracks the prosecution history, which reveals that the claim language was an amendment to the patent.

By way of explaining this amendment, the wrapper includes a letter from the applicant’s attorney, which states: The applicant wishes to make of record that the undersigned attorney and the Examiner agreed during their telephone interview that the purpose of aeration and flow rate limitations added by the amendment to step (

c) of claim 1 was to define a range of dissolved oxygen concentration for the metals concentration which would result form [sic] the recited ratios of aeration and flow rate limitations. The intention of this language was not to limit the application of this claim to any particular waste water flow rate such as 50 gal./min to 500 gal./min. Thus, the available intrinsic evidence supports the

interpretation that the language in question, combined with the associated ranges for metal concentrations and flow rates, defines a rate of aeration. Support for this

interpretation is also found in the extrinsic evidence received by the court. Both plaintiffs’ expert, Dr. Roth, as well as defendant’s expert, Mr. Dupon, testified that if one skilled in the art knew the water input flow rate and the nature and extent of the metals concentration, he or she could adjust the rate of aeration to generate an optimum dissolved oxygen concentration — one that would maximize the efficiency of the reaction. Dr.

Roth further indicated that “one skilled in the art would conclude that the range relates to the rate of aeration, that will supply the needed oxygen concentration to effect an appropriate reaction based upon the influent flow rate,” noting further that “[o]ne skilled in the art ... could easily calculate the equivalent oxygen concentration based upon the rate of aeration.” For his part, Mr. Dupon rejected the idea that the referenced language referred to a particular dissolved oxygen concentration or a particular aerator rating. Instead, he candidly agreed that the most likely

interpretation of the language was as a reference to a rate of aeration — one that would lead to the proper oxidation of the waste stream. Mr. Dupon, however, discounted this

interpretation based on his view that one skilled in the art would recognize that some waste water metal contaminants might not need to be aerated at all to be precipitated. In his testimony at the Markman hearing, however, he never suggested that the presence of some minimal amount of oxygen, e.g., that obtained at an oxidation rate of 0.01 lbs per hour, would prevent the precipitation of such contaminants. Consequently, on the whole, even Mr. Dupon grudgingly agreed that the most likely

interpretation of the language in question was that it referred to a rate of aeration. Overall, the court believes that the intrinsic evidence is adequate to demonstrate that the language in questions refers to a rate of aeration to be determined by one skilled in the art once other variables, including the rate of flow of the waste water and the chemical composition thereof, were determined. And though not determinative, it is noteworthy that that intrinsic evidence is also supported by expert testimony. C.

Other Claims Construed 1. ’497 Patent At the outset, it should be noted that plaintiffs and defendant agreed as to the construction of various claims in the ’497 patent.

Based upon those agreements, the court construed the relevant claims, as follows: CLAIM_CONSTRUCTION_ Claim 1: “means” elements means-plus-function elements and limited to the corresponding structure described in _the specification and equivalents thereof Claim 1: “aerator means having a shaft means-plus-function elements, construed extending therefrom into said reaction together, corresponding to motor 6, shaft vessel said shaft having a discharge end 15, aerator propl6 and discharge tip 17 in for discharging oxidant, said aerator Figure 3, with aerator prop 16 providing means having agitation means.” agitation Claim 1: “a neutralizing agent feed line means-plus-function element, describing the means ... for delivering neutralizing function of delivering the neutralizing agent” agent and corresponding to caustic feed line 19 Claim 1: “pump means operatively associat- means-plus-function element, describing the ed with said reaction vessel” function of pumping the caustic and corresponding to metering pump 12 Claim 1: “power source means operatively means-plus-function element, describing the associated with said reaction vessel for function of energizing the apparatus and energizing said apparatus” corresponding to a portable generator or line power Claim 1: “effluent discharge pipe means means-plus-function element, describing the operatively connected to said reaction function of discharging the water and cor-vessel for discharging the water” responding to effluent conduit 11 Claim 3: “means for receiving precipitants includes a thickener, a clarifier, and a from said mixture” settling pond Claim 3: other “means elements” Definite Claim 3: “generally adjacent” and “general- Definite ly the same point” Claim 5: “substantially simultaneous” Definite Regarding the construction of other claims in the ’497 patent on which the parties disagreed, the court’s rationale for its prior oral ruling is, as follows: (

i) Claim 1: “neutralizing supply means.” The court ruled that this phrase is not indefinite and that the structure associated therewith is “a container containing a caustic, usually liquid, that is exterior to the tank, is portable and readily moveable, and is connected to the caustic feedline 19.” In arguing that this element of the claim was indefinite, defendant noted that the drawings do not indicate the “caustic supply means” and reasoned that “no person skilled in the art can discern whether the ‘neutralizing supply means’ is a tank of caustic, a caustic generating machine, or something else.” Adverting to Atmel Corp. v.

Information Storage Devices, Inc., 198 F.3d 1374 (Fed.Cir.1999), defendant contended that absent the disclosure of a structure, it is impossible for a person with ordinary skill in the art to understand the breadth of the disputed language, thereby making claim 1 indefinite. To be sure, in Atmel, supra, the Federal Circuit emphasized the importance of having a means-plus-function associated with a structure. Atmel, 198 F.3d at 1380. The court, however, did not hold that the structure had to be depicted in a figure accompanying the specification.

Rather, in commenting on the particularity requirement, it noted, with approval, the portion of the Patent and Trademark Office’s Supplemental Examiner Guidelines which indicates: The written description does not have to explicitly describe the structure (or material or acts) corresponding to a means (or step-) plus-function limitation to particularly point out and distinctly claim the invention as required by 35 U.S.C. 112 112.

Rather, disclosure of structure corresponding to a means-plus-function limitation may be implicit in the written description if it would have been clear to those skilled in the art what structure must perform the function recited in the means-plus-function limitation. Atmel, 198 F.3d at 1380 (quoting PTO Supplemental Examiner Guidelines on Applying 35 U.S.C. § 112 H 6, 58 Fed.Reg. 443, 444 & nn. 12 & 13 (1999)).

Guided by these standards and its prior decision in In re Dossel, 115 F.3d 942, 946-47 (Fed.Cir.1997), the Atmel court emphasized that the essence of the structure requirement is that “the corresponding structure^) of a means-plus-function limitation must be disclosed in the written description in such a manner that one skilled in the art will know and understand what structure corresponds to the means limitation.” Atmel, 198 F.3d at 1382; see also S3 Inc. v. nVIDIA Corp., 259 F.3d 1364, 1367 (Fed.Cir.2001).

Thus, in order for a means-plus-function limitation to meet the particularity requirement of § 112 112, the written description need not identify a particular structure in a figure that is associated with the claim, provided adequate disclosure for one skilled in the art is otherwise made.

Bringing this standard closer to home, the court finds that the patentees here adequately disclosed sufficient structure in the specification to give meaning to the phrase “neutralizing supply means.” Thus, the specification indicates that the “caustic feed line 19 connects caustic supply means (not shown) to the reaction vessel 4.” It also notes repeatedly that the “apparatus of the invention” is “portable,” thereby suggesting that the “neutralizing supply means” must also be portable.

Further, the specification discloses that the neutralizing substance is a caustic (e.g., “[a] caustic substance is injected into the system which neutralizes the acid in the water”), which defendants admits one skilled in the art would know would usually be a liquid. Finally, it is evident that if the neutralizing supply is either a liquid, or even a gas, it must be in some sort of a container.

Combining all of these elements together led the court to conclude that one skilled in the art would know that the structure needed to perform the function recited in this means-plus-function is “a container containing a caustic, usually liquid, that is exterior to the tank, is portable and readily moveable, and is connected to the caustic feedline 19.” Accordingly, despite the fact that this structure is not shown in the figures in the patent, the court finds that the phrase “neutralizing supply means” meets the particularity requirement in

section 112, paragraph (6) and, therefore, is definite. (ii) Claim 1: “automated metering and control means.” The court likewise ruled that this element is not indefinite and refers to the metering pump 12 and control panel 13 in the accompanying Figure 2 of the patent. Defendant argued that this means clause is indefinite.

This means clause has two functions — ^‘delivering said neutralizing agent into said reaction vessel through the neutralizing agent feed line means” and delivering “oxidant from said aerator means at substantially the same time.” Defendant admitted that the first of these functions is performed by metering pump 12, but asserted that no structure was disclosed which might perform the second of these functions, that is, delivering the oxidant from the aerator at substantially the same time.

Regarding the structures associated with this means clause, the patent’s description of the preferred embodiment provides: FIG. 2 shows metering pump 12, which is used to control the amount of fluid introduced into the system. Control panel 13 is used to monitor flow of fluids into the system____The metering pump through a pH monitoring device maintains a proper pH level for the effluent. From this description, it is evident that the “automated metering and control means” also includes control panel 13.

At first blush, the role played by the control panel 13 in monitoring the delivery of the oxidant from the aerator is somewhat obscure. The description of the control panel quoted above anticipates that panel would monitor the “flow of fluids,” and other claims in the patent, as well as the specification, teach that many of the oxidants anticipated to be used in the processes are gases, such as air. However, Dr. Roth, clarified that one skilled in the art would know that the phrase “fluids” refers not only to liquids, but also to gases.

And, his view is in accord with the common definition of the term “fluid,” which encompasses both liquids and gases. See The American Heritage Dictionary of the English Language 677 (4th ed.2000) (“A continuous, amorphous substance whose molecules move freely past one another and that has the tendency to assume the shape of its container; a liquid or gas”); see also In re Smythe, 480 F.2d 1376, 1383 (C.C.P.A.1973) (fluid includes both gas and liquid).

Accordingly, contrary to defendant’s claims, the patent does reveal control structures that perform the function of delivering the oxidant from the aerator means, to wit, the metering pump 12 and control panel 13. (iii) Claim 2: “The apparatus of Claim 1 wherein said influent pipe is disposed closely adjacent to the discharge end of said aeration shaft whereby the relative general proximity of said water source means said neutralizing agent feedline discharge end and said agitation means will enhance the efficiency of the reaction.” In its oral ruling, this court held that this claim is definite and was depicted in Figure 3 of the patent.

Defendant had argued that the phrase “closely adjacent” lacked any defined meaning and, therefore, was indefinite. It asserted that while Figure 3 of the patent provided a preferred embodiment — an example of how one might achieve general adjacency — it did not cure the indefiniteness problem because the parameters of such adjacency still were undefined. In the courts’ view, the phrase “closely adjacent” has an ordinary, accepted meaning that is not varied by the patent.

The dictionary defines the term “adjacent” as “close to; lying near” or “next to; adjoining,” and defines the adjective “close,” the root for the adverb “closely,” as “being near in relationship” and “having little or no space between elements or parts.” See The American Heritage Dictionary of the English Language 21, 349 (4th ed.2000). These words, taken in combination, thus suggest that the influent pipe has an endpoint not distant from the discharge end of the aerator shaft.

To be sure, this terminology does not require a particular orientation (e.g., a 45° angle), nor a specific distance between the endpoint (e.g., 6 inches). Yet, in the court’s view, one skilled in the art would know what was meant by this language. This is particularly so as other language in the patent emphasizes that a key object of the patent is to introduce the water, the neutralizer and the oxidant at essentially the same point and time in the process flow.

Thus, in the description of the preferred embodiment, the patent indicates that “[t]he neutralization means and the aeration means are in generally close proximity and oriented in generally the same axial position.” Finally, it bears noting that the orientation of the influent pipe to the aerator depicted in figure 3 provides further support for this court’s construction of the “closely adjacent” language. (iv) Claim 3: “means for introducing a source of acidic or metal-bearing water into a treatment unit.” This court ruled that this element of claim 3 is definite and is a means-plus-function associated with influent conduit 9, conduit 18 and conduit 22 in Figure 3 of the patent.

Defendant had argued that the structure associated with this function could not be the “influent pipe means” (ie., structures 9 and 18) because that structure is already claimed and performs the same function. In the court’s view, however, there is nothing inconsistent with some of the structures associated with the “influent pipe means” also serving as a “means for introducing a source of acidic or metal-bearing water into a treatment unit.” To be sure, as defendant points out, the doctrine of claim differentiation states that different claims should be presumed to have different scope, which “means that an

interpretation of a claim should be avoided if it would make the claim read like another one.” Autogiro Co. of Am. v. United States, 181 Ct.Cl. 55, 384 F.2d 391, 404 (1967). However, claim differentiation is not a “hard and fast rule of construction,” Kraft Foods, Inc. v. Int’l Trading Co., 203 F.3d 1362, 1368 (Fed.Cir.2000) (citations and quotation marks omitted), and does not inflexibly command a particular

interpretation. See also Bristol-Myers Squibb Co. v. Ben Venue Laboratories, Inc., 246 F.3d 1368, 1376 (Fed.Cir.2001). Common sense, not entirely out of place even in this complex legal context, suggests that in some instances a single structure can perform multiple functions — a pipe, for example, can serve both to transfer liquid from one point to another while also separating that liquid from other material during transit.

Bearing out this intuition, both the Federal Circuit and this court have concluded that, providing no ambiguity is introduced, the same structure may perform more than one task and thus correspond to two or more differently-worded mean-plus functions. See Davies v. United States, 31 Fed.Cl. 769, 775-76 (1994) (finding two means-plus function claims associated with a single disclosed structure); see also Ballard Medical Products, 268 F.3d at 1361; Caterpillar Inc. v. Deere & Co., 224 F.3d 1374, 1377 (Fed.Cir.2000).

But even if the doctrine of claim differentiation were otherwise, there is not a complete identity between the “influent pipe means” and the “means for introducing a source of acidic or metal-bearing water into a treatment unit.” Rather, the former is subsumed within the latter.

Thus, while items 9 and 18 serve as the corresponding structures for both portions of claim 1 and the means-plusfunetion in claim 3, the latter function also appears to be associated with item 22 of Figure 3, which, according to the specification, is the “conduit” which “sends the mixture to an area of the tank that may contain internal baffles.” That the latter area of the tank is also part of the treatment unit is made clear in Figure 1 of the patent, which, in combination with the description of the preferred embodiment, indicates that the entire tank constitutes the “treatment unit.” (

v) Claim 9: “wherein the pH is substantially instantaneously elevated.” In its oral ruling, this court construed this phrase to mean “a level of pH elevation caused by introduction of a caustic, e.g., sodium hydroxide, potassium hydroxide, magnesium hydroxide, barium hydroxide, and combinations thereof.” Defendant asserts that this phrase, in essence, means that the claim requires a neutralizing agent that would act the quickest and cause the pH to rise the fastest.

Although defendant does not assert that this claim, if interpreted in this fashion, is indefinite, it does suggest that if the claim is not so interpreted, the use of the term “substantially” would render the claim indefinite. Defendant’s argument, however, rests on the mistaken premise that the use of the word “substantially” inevitably introduces fatal ambiguity into a claim. Not so.

Rather, words of degree are entirely appropriate “when serving reasonably to describe the claimed subject matter to those of skill in the field of invention, and to distinguish the claimed subject matter from the prior art.” Andrew Corp., 847 F.2d at 821. And this court has held that words of degree may be used “to prevent the avoidance of infringement by minor changes that do not affect the results sought and accomplished.” C.E. Equipment Co., Inc. v. United States, 17 Cl.Ct. 293, 299 (1989); see also Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 133 F.Supp.2d 843, 861 (E.D.Va.2001).

Consistent with this view, in York Products, Inc. v. Central Tractor Farm & Family Center, 99 F.3d 1568 (Fed.Cir.1996), the Federal Circuit held that the use of the word “substantial” did not render a claim indefinite. Noting that the “patent discloses no novel use of claim words,” the court accorded the word “substantially” its normal meaning, stating: “ordinarily, therefore, ‘substantially’ means ‘considerable in ... extent, ..., or largely but not wholly that which is specified.’ ” Id. at 1572-73; see also LNP Eng’g Plastics, Inc. v.

Miller Waste Mills, Inc., 275 F.3d 1347, 1354 (Fed.Cir.2001); Seattle Box Co., Inc. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 829 (Fed.Cir.1984); C.E. Equipment Co., 17 Cl. Ct. at 299 (“the term ‘substantially’ in patent claims gives rise to some definitional leeway----Patentees may use these terms to avoid unduly limiting the modified word. Thus, the term ‘substantially’ may prevent avoidance of infringement by minor changes that do not affect the results sought and accomplished.”).

In the instant case, there is no indication that the patent assigned a special meaning to the term “substantially,” and, as such, the phrase “substantially instantaneously” simply means that the elevation of the pH is nearly instantaneous.

The specification to the patent makes clear that the neutralizer intended to cause such a reaction is a caustic and that examples of such a caustic include “sodium hydroxide, potassium hydroxide, and mixtures thereof.” Expert testimony at trial further verified that one knowledgeable in the art would know at least two other caustics that would produce the required elevation of the pH — magnesium hydroxide and barium hydroxide.

Accordingly, the court concluded that the disputed language in claim 9 should be interpreted to refer to the elevation of pH that would occur upon the introduction of a caustic, giving as examples thereof sodium hydroxide, potassium hydroxide, magnesium hydroxide, barium hydroxide, and combinations thereof. 2. ’800 Patent At the outset, it should be noted that plaintiffs and defendant agreed as to the construction of various claims in the ’800 patent.

Based upon those agreements, the court construed the relevant claims, as follows: CLAIM CONSTRUCTION Claim 1: “metal compounds” “precipitated or suspended compounds of metal” Claim 1: “selected from iron, manganese, aluminum, zinc, copper, lead, arsenic, and chromium” “selected from iron, manganese, aluminum, zinc, copper, lead, arsenic, and chromium, either alone or in combination with themselves or other materials and in any initial form so long as they are precipitated or suspended” Claim 1: “comprising” “comprising at least” Claim 1: “agitating the waste water” includes agitation by any means, including by aeration and by a mixer Claim 1: “flocculating agent polymer” includes a polyelectrolyte Claim 1: “a group consisting of cationic and anionic polymers” limited to cationic and anionic polymers but includes any cationic or anionic polymer Claim 2: “further dewatering the floccules separated in step (e)” “processing the floccules separated in step (

e) in a second or later stage” Claim 9: “polishing means” limited to a polishing pond, a settling pond, and a polishing tank, and their equivalents Claims 21: “used for primary clarification purposes” “in a first stage clarifier” Claims 22: “used for settling purposes” “in a settling pond or tank” Regarding the construction of the remaining claims in the ’800 patent on which the parties disagreed, the rationale for the court’s prior oral ruling is, as follows: (

i) Claim 1: “aerating the water.” The court construed this phrase to mean “supply air and other gaseous oxidants to the waste water.” Defendant argued that this element in claim 1 does not include forms of oxidation other than introducing air. However, the ’497 patent, which is the preferred embodiment for this portion of the ’800 patent, envisions the use of other gaseous oxidants {e.g., ozone).

As such, absent extraordinary evidence to the contrary (of which, there is none, let alone, clear and convincing evidence), the phrase “aerating the water,” as used in the ’800 patent, must be construed to include the preferred embodiment and, therefore, to cover the introduction not only of air, but other gaseous oxidants, into the waster water stream. See Vitronics Corp., 90 F.3d at 1583 (a claim construction that would exclude the preferred embodiment “is rarely, if ever, correct and would require highly persuasive evidentiary support”); Hoechst Celanese Corp. v. BP Chems.

Ltd., 78 F.3d 1575, 1580-81 (Fed.Cir.1996) (refusing to adopt a claim construction of “stable” that would exclude the preferred embodiment disclosed in the specification); see also Rexnord Corp. v. Laitram Corp., 274 F.3d 1336 (Fed.Cir.2001) (citing cases). This construction is bolstered by several dictionary

definitions of the term “aeration.” See, e.g., The American Heritage Dictionary of the English Language 3 (4th ed.2000) (“[t]o supply or charge (liquid) with a gas”). Based on this evidence, the court need not tarry and rejects defendant’s cramped

interpretation of this element. (ii) Claim 1: “about 50 gal./min. to 500 gal./min.” and “about 50 mg./l to about 1,000 mg./l.” As discussed above, the court believes that these ranges, when viewed in conjunction with the ranges of dissolved oxygen concentration indicated in the patent, allow for the calculation of a rate of aeration and are not intended as limits on the patent involving cei’tain flow rates or metal concentrations.

Apart from the prosecution history discussed above, further indication of this may be found in the example in the specification, which refers to a waste water stream having a “dissolved metal concentrations of 10,000 ppm.” Were defendant correct, the example, which corresponds to 10,000 mg./l., would be outside the limits supposedly prescxibed in claim 1 — a construction, however, that would be disfavored.

See Vitronics, 90 F.3d at 1583 (iii) Claim 23: “adding in a dilute concentration of from about 0.5% to about 1.5% by weight.” At the Markman hearing, this court reserved raling on defendant’s assertion that this claim is indefinite. Defendant offered two reasons for its assertion: First, it noted that the phrase “added in dilute concentration” does not specify at what stage in the method the polymer is being added.

According to defendant, the claim also fails to specify whether the cited concentration refers to the dilution of the polymer px’ior to being added to the waste water or to the concentration of the polymer in relation to the waste water stx*eam. Second, defendant again demurred to the use of the word “about,” indicating that usage depxives the range of any specificity.

Plaintiffs countered that the patent, at various points, specifies the addition points for the polymers and that one skilled in the art would know that the dilute concentration refers to the dilution of the polymer prior to being added to the system. They further contended that one skilled in the art would know that some level of expeidmentation would be required to select the proper polymer, dosage and dilution to deal with a particular waste stx’eam.

Claim 1, on which claim 23 is dependent, indicates that the “flocculating agent polymer” is added to the waste water after the pH of the water is adjusted and the water is aerated and agitated. Consistent with this claim, the accompanying Figure 1 depicts a polymer tank 24 that eventually connects with rotary drum 22, immediately after the water leaves the reaction tank in which it is neutralized and aerated.

To be sure, claim 2 of the patent, which is also dependent on claim 1, describes a process whereby there is further dewatering of the floccules separated in claim 1, and claim 3, which is dependent on claim 2, describes the method of claim 2 “wherein additional flocculating agent polymer is added to at least a portion of the waste water.” Likewise, claim 11 effectively is dependent on claim 1 and describes a method where “additional flocculating agent polymer is added after the clarifier and then again after the rotary drum thickener.” But, significantly, claim 23 is neither dependent upon claim 2 or 3, nor claim 11, and thus does not incorporate the possibility of a second point for the introduction of the polymer.

As such, in the court’s view, one skilled in the art would know where the polymer referred in claim 23 was to be introduced in the method described by claim 1. In addition, the court rules that the dilution referred to in claim 23 is that of the polymer before, rather than after, it is added to the waste water stream.

This conclusion most naturally proceeds from the language of the claim which refers to the polymer being added “in a dilute concentration of from about 0.5% to about 1.5% by weight.” Indeed, nothing in the patent or its prosecution history suggests any limitations addressed to the weight of polymer that would be added into the waste water stream. Moreover, various extrinsic evidence offered by the parties, including expert testimony, indicates that polymers are traditionally marketed in concentrated form and each comes with a recommended dilution rate — the amount of water to be added before the polymer is used.

Dr. Roth testified that the range of dilution specified in claim 23 was a “typical range” for diluting polymers. This industry practice, of course, is consistent with an

interpretation of this claim that specifies the dilution of the polymer before it is added to the waste water. Defendant has not provided clear and convincing evidence to the contrary. Finally, for reasons similar to those described above, the court also does not believe that the use of the term “about” renders claim 23 indefinite. Rather, the court believes that one skilled in the art would view the term “about” as indicating “approximately” That ends this phase of our journey.

With these definitional building blocks in place, the court moves to defendant’s arguments challenging the validity of the subject patents. III. VALIDITY OF PATENTS We begin with familiar fare: patent claims are presumed valid, 35 U.S.C. § 282 (2001), and the burden of establishing to the contrary rests on the party asserting invalidity, who must prove the facts supporting invalidity by clear and convincing evidence. See Georgia-Pacific Corp. v. United States Gypsum Co., 195 F.3d 1322, 1330 (Fed.Cir.1999), cert. denied, 531 U.S. 816, 121 S.Ct. 54, 148 L.Ed.2d 22 (2000); Massey v.

Del Labs., Inc., 118 F.3d 1568, 1573 (Fed.Cir.1997). The court will consider defendant’s challenges to the validity of the ’497 and ’800 patents seriatim. A. ’497 Patent Defendant contends that the claims of the ’497 patent fail to meet various statutory requirements in the Patent Act. Specifically, it asserts that claims 1 and 2 of the ’497 patent are invalid on grounds of obviousness under 35 U.S.C. § 103(a), and that claims 3 through 9 of the ’497 patent are invalid not only for obviousness, but also for lack of enablement under 35 U.S.C. § 112 1Í1. 1. Is the ’497 Patent Obvious?

A patent is invalid for obviousness when differences between its claims and the prior art “are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art.” 35 U.S.C. § 103(a) (2000).

While the ultimate determination whether an invention would have been obvious is a question of law, this conclusion is based on the totality of the evidence and informed vel non by four underlying factual inquiries: (1) the scope and content of the prior art; (2) the level of ordinary skill in the prior art; (3) the differences between the claimed invention and the prior art; and (4) any objective evidence of nonobviousness, such as long felt need, commercial success, the failure of others, or copying. See Graham v.

John Deere Co. of Kansas City, 383 U.S. 1, 17-18, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966); Brown & Williamson Tobacco Corp. v. Philip Morris, Inc., 229 F.3d 1120, 1124 (Fed.Cir.2000). The so-called Gtaham factors guide in determining “whether the prior art would have suggested to one of ordinary skill in the art that this process should be carried out and would have a reasonable likelihood of success, viewed in the light of the prior art.” Brown and Williamson Tobacco Corp., 229 F.3d at 1124 (quoting In re Dow Chem., 837 F.2d 469, 473 (Fed.Cir.1988)).

Defendant must prove these factual predicates by clear and convincing evidence. See Newell Cos., Inc. v. Kenney Mfg. Co., 864 F.2d 757, 767 (Fed.Cir.1988), cert. denied, 493 U.S. 814, 110 S.Ct. 62, 107 L.Ed.2d 30 (1989); Estate of Wicker, 43 Fed.Cl. at 181. Defendant asserts that the critical elements in the claims of the ’497 patent were all shown in the prior art and that it would have been obvious to one skilled in the art in January 1986 to alter or combine the prior art so as to produce the ’497 patent.

The court will analyze these assertions, and plaintiffs’ responses thereto, in the context of the four Graham factors identified above. See Ruiz v. A.B. Chance Co., 234 F.3d 654, 663-64 (Fed.Cir.2000) (noting the need for the court to make specific findings with respect to the four Graham factors in determining obviousness). (

i) The scope and content of the prior art The scope of the relevant prior art includes that “‘reasonably pertinent to the particular problem with which the inventor was involved.’ ” In re GPAC Inc., 57 F.3d 1573, 1577 (Fed.Cir.1995) (quoting Stratoflex, Inc. v.

Aeroquip Corp., 713 F.2d 1530, 1535 (Fed.Cir.1983)). “References that are not within the field of the inventor’s endeavor may also be relied on in patentability determinations, and thus are described as ‘analogous art’, when a person of ordinary skill would reasonably have consulted those references and applied their teachings in seeking a solution to the problem that the inventor was attempting to solve.” Id. at 1578 (quoting Heidelberger Druckmaschinen AG v. Hantscho Commercial Prods., Inc., 21 F.3d 1068, 1071 (Fed.Cir.1994) (citation omitted)); see also Harmon at § 4.4, p. 158.

With respect to prior art, “[w]hile a reference must enable someone to practice the invention in order to anticipate under § 102(b), a nonenabling reference may qualify as prior art for the purpose of determining obviousness under § 103.” Symbol Technologies, Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed.Cir.1991). In the case sub judice, defendant challenges claim 1 of the ’497 patent as obvious, advancing that every element thereof is found in the prior art references of U.S. Patent No. 4,652,381 (“Inglis”), U.S.

Patent No. 4,240,990 (“Inhofer”), and Design Manual: Neutralization of Acid Mine Drainage, published by the EPA in January, 1983 (the “EPA Manual”). Likewise, defendant asserts that claim 2 of the ’497 patent is obvious because of the prior art reference of InLine Aeration and Treatment of Acid Mine Drainage, United States Department of the Interior Bureau of Mines Report of Investigations number 8868, by T.E. Ackman and R.L.P. Kleinman, published in 1984 (“Ackman”). Finally, defendant asserts that claims 3 through 9 of the ’497 patent are obvious in light of Inglis, Inhofer, and the EPA Manual.

While plaintiffs admit that the references cited by defendant are prior art, they assert that art is not analogous. Per contra. Based upon the testimony received, the court concludes that the referenced prior art would have been consulted by a person of ordinary skill attempting to solve the problem surmounted by the ’497 patent. For example, while Inglis does not involve mine waste water treatment, it does involve the treatment of industrial waste water contaminated by metals to lower the concentrations thereof to levels permitting discharge of the water to a sewer.

Moreover, the contaminating metals involved in Inglis — lead, iron, copper and zinc — are among those covered by the ’497 patent. Similarly, Ackman discusses the treatment of acid mine drainage using aeration, a concept that various witnesses confirmed is related to the ’497 patent. Indeed, Ackman acknowledged the contributions of Messrs. Simonetti and Kanzleiter, two of the inventors of the ’497 patent, for their role in developing aeration devices for treating mine waste water.

Based on this evidence and other evidence in the record, the court concludes that the prior art identified by defendant is analogous and thus relevant to the obviousness inquiry here. (ii) The level of ordinary skill in the prior art The person of ordinary skill in the art is a legal construct — a hypothetical person who is placed in the position of being aware of all of the relevant prior art. Custom Accessories, Inc. v. Jeffrey-Allan Industries, Inc., 807 F.2d 955, 962 (Fed.Cir.1986).

In determining this individual’s level of skill, a court may consider several factors, including the kinds of problems existing in the art, the known solutions to the problems, the rate at which new inventions are made in the field, the complexity of the technology and the educational level of active workers in the field. Id.; see also Gargoyles, Inc. v. United States, 32 Fed.Cl. 157, 165 (1994), aff'd, 113 F.3d 1572 (1997). Not all such factors may be present in every case, and one or more of them may predominate. Custom Accessories, 807 F.2d at 962-63; see also In re GPAC, Inc., 57 F.3d at 1579.

Notably absent from this list is the level of skill of the inventors of the patents, which is generally not determinative. See Helifix Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339, (Fed.Cir.2000); Custom Accessories, 807 F.2d at 962. According to the expert testimony in this case, a person of ordinary skill in the art with respect to the ’497 patent and analogous prior art would be one who has a combination of training and experience that allows him or her to understand the various processes that are described in the patent, including pH adjustment, oxidation, aeration, mixing, sedimentation, and solids de-watering.

Such an individual could be one with ordinary skill in the art even if he or she understood these processes not in the context of mine waste water, but in dealing with other forms of industrial and municipal waste water. One skilled in the art, however, would know that the constituency and concentrations of metals in acid rock drainage can fluctuate at a particular site and, assuredly, is different from site to site.

As such, testimony confirmed that such an individual would be able to conduct laboratory analysis (e.g., bench scale tests or jar tests) designed to fine tune the chemistry that would be needed to deal with a particular waste stream. According to that testimony, the ability to conduct such testing, which could range, in duration, from several hours to several weeks, is essential to determining the optimum conditions for precipitating the metals, using a combination, in particular, of various neutralizers and polymers, and dilutions thereof.

Finally, one skilled in the art would be knowledgeable about solubility curves based on thermodynamic equilibrium data and under which conditions precipitation would be optimum. (iii) The differences between the claimed invention and the prior art Although the four Graham factors indisputably form the skeletal framework of the obviousness analysis, the backbone of that analysis, certainly in the instant ease, is the comparison of the claimed invention with the prior art. Graham, 383 U.S. at 17, 86 S.Ct. 684.

Regarding this third, often decisive, Graham factor, the Federal Circuit has stated that “whether obviousness is established by combining the teachings of the prior art, ‘the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.’ ” GPAC, 57 F.3d at 1581 (quoting Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d 1015, 1025 (Fed.Cir.1985) (citation omitted)).

Reiterating this concept, the court more recently opined: “[wjhen a patent describes a new mechanical device that can be viewed as a new combination or arrangement of mechanical components, the legal conclusion of obviousness requires that there by some suggestion, motivation, or teaching in the prior art whereby the person of ordinary skill would have selected the components that the inventor selected and used them to make the new device.” C.R. Bard, Inc. v. MS Systems, Inc., 157 F.3d 1340, 1351 (Fed.Cir.1998) (citing cases).

In such circumstances, in order to find obviousness, the combined teachings of the prior art must suggest the improvements embodied by the invention. In re Sernaker, 702 F.2d 989, 994 (Fed.Cir.1983). Claim 1. Relying principally on Mr.

Dupon’s testimony, defendant first asserts that every element of claim 1 — starting with the source of acidic or metal-bearing water and ending with the effluent discharge pipe — is shown in Inglis except for two elements: the “power source means” and the “agitation means.” Defendant asserts that the addition of the latter two elements would have been obvious to one of ordinary skill in the art.

Plaintiffs respond that major differences exist between claim 1 and Inglis and further contend that defendant has failed to provide any evidence that one skilled in the art would have combined Inglis with other prior art to remedy these deficiencies.. The court finds that defendant has not shown, by clear and convincing evidence, that the critical elements of claim 1 of the ’497 patent were all found in prior art. In particular, prior art did not envision the type of continuous flow treatment taught by the ’497 patent, but instead employed versions of batch treatments. This is a major distinction.

Describing the difference between a batch treatment and a continuous flow method, Mr. Dupon testified that “[a] batch treatment is differentiated from continuous flow in that water flowing into it — a specific volume of water flows into the tank. And therefore, it reacts. Once reaction is complete, water is allowed then to exit.” He further indicated that in continuous flow treatment “there is a continuous input to the reaction and a continuous output,” noting that ordinarily water in such a system enters the system at the same rate that it exits.

According to various testimony, prior art employing a batch approach to treating waste water required much longer treatment resonance times, relied on some degree of gradual settling and, consequently, required much larger containment vessels, often pond-like settling basins. Highlighting these distinctions between the prior art and the ’497 patent, Mr. Simonetti, one of the inventors of the patent, testified: In the typical treatment plants we had at Kitt Energy, and they are to this day still the typical treatment plant, there are relatively large basins that are used for aeration.

They are, as I say, generally designed for about 30 minutes resonance time, perhaps as much as an hour or two hours resonance time. By that I mean if you would take a massive volume of water coming into one of these basins, say 300 gallons per minute, and you would say 300 gallons per minute in 30 minutes would be 9,000 gallons. So you would have to have a vessel at least that size for this transfer. Typically they are much larger than that... The Inglis patent, on which defendant primarily relies in arguing obviousness, differs from the ’497 patent in essentially employing this type of batch treatment.

While Inglis does anticipate that a limited flow of water may continuously enter the treatment unit, such flow is essentially a trickle and would be distinguished by one skilled in the art from the continuous flow method employed in the ’497 patent. Further bringing into relief the claim at issue and prior art, Mr. Dupon candidly admitted that prior to the ’497 patent, he was unaware of a tank that employed a four-minute resonance time for treating acid mine drainage. Moreover, Mr. Roth convincingly testified that: This patent describes a significantly improved process for treating acidic waste.

It invents a one-stage process to neutralize and oxidize the acidic waste simultaneously, operates with greatly reduced resonance times which greatly reduces the size of the treatment tank needed, results in precipitant which are amenable to flocculation and removal, produces an effluent which can be discharged, can be portable.

He further pointed out, in reference to Inglis, that “[tjhere is a batch element to it regardless of how you operate it.” And he calculated that to treat the amounts of water contemplated in the ’497 patent on a continuous basis using the Inglis method would require a 760,000 gallon tank, several orders of magnitude larger than the tank in the ’497 patent. As the evidence unfolded, other significant differences between claim 1 of the ’497 patent and the prior art became apparent.

For example, Inglis relied upon resonance times that allowed for gradual settling, the recycling of water during the treatment, and the use of two different treatment tanks with separate pH adjustments — -none of which features are found in claim 1. Moreover, Inglis did not teach use of an aerator in the same fashion as the ’497 patent. In this regard, Mr. Dupon admitted that while the ’497 patent describes agitation of the waste water by both injection of gas and an impeller, Inglis describes agitation only by gas injection. Nor can other prior art references save this sinking ship.

Striving mightily to plaster over the gaps between Inglis and the ’497 patent, defendant suggests that one skilled in the art would have also relied on teachings in Inhofer and the EPA Manual.

To be sure, Inhofer describes an aerator for use in the treatment of water with a propeller, thereby disclosing, in the words of claim 1 of the ’497 patent, an “aerator means having agitation means.” Moreover, the EPA Manual summarizes various methods for treating acid mine drainage (principally those that include iron contaminants) that rely on neutralization and oxidation, including the use of continuous flow methods using large holding basins and settling ponds. However, apart from Mr.

Dupon’s conclusory testimony, defendant provided no evidence explaining why one skilled in the art would have found it obvious to combine these prior art references, that is, to employ an aerator like that in Inhofer in an apparatus equivalent to that described in Inglis, or to modify Inglis based upon the teachings in the EPA Manual to derive the treatment apparatus described in claim 1 of the ’497 patent.

On this count, defendant’s proof certainly is not the stringent showing of a suggestion, teaching or incentive to combine features that the Federal Circuit has required to demonstrate obviousness based upon the combination of elements found in various sources. See In re Sang Su Lee, 277 F.3d 1338, 1343 (Fed.Cir.2002) (citing numerous cases); Brown & Williamson Tobacco Corp. v.

Philip Morris Inc., 229 F.3d at 1125 (“a showing of a suggestion, teaching, or motivation to combine the prior art references is an ‘essential evidentiary component of an obviousness holding”’); In re Rouffet, 149 F.3d 1350, 1359 (Fed.Cir.1998). “This showing must be clear and particular,” the Federal Circuit has stated, and “broad conclusory statements about the teaching of multiple references, standing alone, are not ‘evidence.’ ” Brown & Williamson Tobacco, 229 F.3d at 1125. Of the two contrasting evidentiary standards in this quote — one describing what is required, the other what is inadequate — Mr.

Dupon’s views on combination more resemble the latter. They were altogether too broad and conclusory to carry the day. His report, seemingly mirroring defendant’s overall approach to proving obviousness, suffers from a hale dose of 20-20 hindsight — offering little more analysis than that because the ’497 patent combined these elements others skilled in the art would have done the same. But, this is precisely the ipse dixit so often rejected by the Federal Circ

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