Thoughts and comments please on ICM's strategy of engineering around the patents?
A winner or doomed argument?
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UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF INDIANA
INDIANAPOLIS DIVISION
)
IN RE: METHOD FOR )
PROCESSING ETHANOL ) 1:10-ml-02181 LJM-DML
BYPRODUCTS AND RELATED )
SUBSYSTEMS (‘858) PATENT )
LITIGATION, )
)
THIS DOCUMENT RELATES TO: )
)
1:10-cv-0180-LJM-DML )
1:10-cv-8000-LJM-DML )
1:10-cv-8007-LJM-DML )
1:10-cv-8008-LJM-DML )
1:10-cv-8009-LJM-DML )
___________________________________ )
DEFENDANTS ICM, INC., DAVID VANDER GRIEND, CARDINAL ETHANOL, LLC,
BIG RIVER RESOURCES WEST BURLINGTON, LLC, BIG RIVER RESOURCES
GALVA, LLC, LINCOLNLAND AGRI-ENERGY, LLC MEMORANDUM IN SUPPORT
OF THEIR MOTION FOR SUMMARY JUDGMENT OF NON-INFRINGEMENT
I. INTRODUCTION
Defendants ICM, Inc. and David Vander Griend, and defendants Cardinal Ethanol, LLC
(“Cardinal”), Big River Resources West Burlington, LLC (“BRRWB”), Big River Resources
Galva, LLC (“BRRG”), Lincolnland Agri-Energy, LLC (“Lincolnland”) (collectively referred to
herein as “ICM-related ethanol plant defendants”), submit the following memorandum of law in
support of their motion for summary judgment of non-infringement of the asserted claims of U.S.
Patent No. 7,601,858 (hereinafter, “the “858 patent”) and U.S. Patent No. 8,008,516 (hereinafter,
“the ‘516 patent”).1 The ‘858 patent and its child, the ‘516 patent, are directed to essentially the
1 The ICM-related ethanol plant defendants’ brief is substantially similar to a related brief that Defendant Iroquios
Bio-Energy Company intends to file in support of its own motion for summary judgment. While both briefs
advocate that a determination of whether syrup processed through a centrifuge is “substantially free of oil” is based
on a comparison of the amount of oil in the syrup before it is processed through the centrifuge and the amount of oil
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same method for recovering corn oil from the waste water of an ethanol plant. According to the
patents-in-suit, thin stillage, a liquid stream containing water, oil and corn solids, is separated
from whole stillage and subjected to an evaporation process that removes some of the water to
form what is referred to as a “syrup” or concentrate. The syrup is fed to a mechanical device,
e.g., a centrifuge, which separates out the corn oil from the syrup and produces two discharge
streams: an oil stream and a substantially de-oiled syrup stream. The latter stream contains
water, corn solids and a very small remaining amount of corn oil.
The object of the invention disclosed in the patents-in-suit is to remove a very large
percentage of the oil in the syrup so as to leave the syrup that exits the centrifuge substantially
free of oil. The ‘858 patent asserts that the inventive method achieves two related concepts: the
recovery of corn oil from the waste water of an ethanol plant, (‘858 Patent, Col. 1, line 43 – Col.
4, line 7), and increasing the value of the waste stream by removing the oil therefrom, thereby
improving the energy efficiency of the downstream drying process. (‘858 Patent, Col. 4, lines 8-
13 and Col 4, line 63 – Col. 5, line 3.) According to the patents-in-suit, a 10% energy savings
results from forming a concentrate that is substantially free of oil. (‘858 Patent, Col. 4, line 54
(substantially free of oil) and Col. 4, line 63 – Col. 5, line 3 (energy savings)).
The patents-in-suit expressly incorporate a claim in the Provisional that 95% of the corn
oil in the in-flowing syrup or concentrate is recovered by the centrifuge. As a result, according
to the patents-in-suit, 5% of the corn oil in the concentrate fed into the centrifuge remains in the
de-oiled syrup after it leaves the centrifuge. Their disclosures also state that the syrup leaving
the centrifuge, which has about 5% of its original oil remaining, is now “substantially free of
oil.” Figure 2 of the patents-in-suit disclose the amount of each constituent component of thin
in the syrup after it has been processed through the centrifuge, the ICM-related ethanol plant defendants present an
alternate way of making this comparison that is disclosed in the patents-in-suit.
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stillage and syrup based on actual experimental testing. Both patents list moisture, oil and solids
content of thin stillage and syrup in three different ways: gallons per minute (GPM), pounds per
hour, and as a percentage. The express claim in the patents-in suit that 95% of the oil is
recovered and 5% of the oil remains in the de-oiled syrup can be verified by comparing one of
these values for oil content in the syrup prior to processing the syrup through the centrifuge with
the comparable value of oil content in the de-oiled syrup after it has been processed in the
centrifuge. Accordingly, the patents-in-suit provide a basis for evaluating how much of oil that
was in the syrup prior to processing through the centrifuge remains in the syrup after it has been
processed through the centrifuge.
The Court has interpreted all of the asserted method claims of the ‘858 to require that the
concentrate stream exiting the centrifuge or mechanical device must be “substantially free of
oil.” Because the ‘516 patent is a continuation of the ‘858 patent and the claim language
concerning the separation and recovery of oil from the concentrate in the ‘516 patent claims is
essentially the same as the ‘858 patent claim language already construed by the court, the
concentrate leaving the mechanical processing step must also be construed to be “substantially
free of oil.” Plaintiff’s own inspection and testing of the oil recovery process used at the ICMrelated
ethanol plants unequivocally establishes that the syrup exiting the centrifuge is not
substantially free of oil. Those results are based on the analysis performed by an independent
testing laboratory that Plaintiff chose. Thus, the ICM-related ethanol plant defendants are
entitled to entry of summary judgment of non-infringement of each asserted claim in this case.
Because the infringement allegations against defendants ICM and Vander Griend are premised
on indirect infringement via contributory infringement or inducement of infringement, and
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because the ICM-related ethanol plant defendants do not infringe the patents-in-suit, defendant
ICM and Vander Griend are entitled to entry of summary judgment of noninfringement as well.
II. UNDISPUTED MATERIAL FACTS
A. The Claimed Invention
1. Plaintiff has accused Cardinal, BRRWB, BRRG and Lincolnland of using
equipment purchased from Defendant ICM to infringe independent method claims 1, 8, 10, and
16, as well as various dependent claims of the ‘858 patent. (See Court Master Docket Nos. 235,
236, 241).
2. The asserted independent claims of the ‘858 patent read:
1. A method of recovering oil from thin stillage, the method
comprising, in sequence:
evaporating the thin stillage to remove water and form a
concentrated byproduct; and
recovering oil from the concentrated byproduct by heating
and mechanically processing the concentrated byproduct
to separate the oil from the concentrated byproduct,
wherein the concentrated byproduct has a moisture content
of greater than 30% and less than 90% by weight.
8. A method of recovering oil from thin stillage, comprising,
in sequence: evaporating the thin stillage to create a
concentrate having a moisture content of greater than 30% by
weight and less than about 90% by weight; and centrifuging
the concentrate to recover oil.
10. A method of processing whole stillage, comprising:
recovering thin stillage from the whole stillage, the thin stillage
including oil and solids; concentrating the thin stillage
including the solids to produce a thin stillage concentrate,
wherein the thin stillage concentrate has a moisture content of
greater than 30% and less than 90% by weight; and recovering
oil from the concentrate by a process consisting essentially
of heating and mechanically processing the concentrate
to separate the oil from the concentrate.
16. In a method for processing corn to produce ethanol and
concentrated thin stillage, the improvement comprising the
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step of recovering a product consisting essentially of oil from
the concentrated thin stillage by heating and mechanically
processing the concentrated thin stillage to separate the oil
from the concentrated thin stillage.
(Court Master Docket No. 236-1)
3. Plaintiff has also accused defendants Cardinal, BRRWB, BRRG and Lincolnland
of using equipment purchased from defendant ICM to infringe the ‘516 patent but has not
identified the specific claims that it alleges are infringed. Thus, for the purpose of this motion, it
is assumed that Plaintiff’s allegation of infringement extends to all independent method claims of
the ‘516 patent, which are claims 1 and 7. (See Court Master Docket Nos. 235, 236, 241).
4. The independent claims of the ‘516 patent read:
1. A method of recovering oil from thin stillage; the method consisting
essentially of, in sequence:
evaporating water from the thin stillage to form a thin
stillage concentrate, wherein the thin stillage concentrate
has a moisture content of greater than 30% and less
than 90% by weight before the recovering step;
mechanically processing the thin stillage concentrate to
separate oil from the thin stillage concentrate; and
recovering the separated oil.
7. A method of processing whole stillage, comprising, in
sequence:
separating distiller wet grains and thin stillage from the
whole stillage, the thin stillage including oil and solids;
concentrating the thin stillage including the solids to form
a concentrate having a moisture content of greater than
30% and less than 90% by weight; and
disc stack centrifuging oil from the thin stillage concen-
(Court Master Docket No. 336-2).
5. Plaintiff has accused defendants ICM and Vander Griend of contributory
infringement and/or inducement of infringement of the ‘858 patent and the ‘516 patent based on
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the direct infringement of the ICM ethanol plant defendants. (Court Master Docket No. 234, ¶¶
14 – 23).
6. The ‘858 patent application was filed on May 5, 2005 and claims priority to a
provisional patent application No. 60/602,050 (“Provisional”), filed on August 17, 2004. (Court
Master Docket No. 236-1, ‘858 patent).
7. Less than five months after the ‘858 application was filed, the ‘516 patent
application was filed on September 30, 2005 as a continuation of the ‘858 application and claims
priority to the same Provisional. (Court Master Docket No. 236-2, ‘516 patent).
8. As a continuation application, the specification of the ‘516 patent is identical to
the specification of the ‘585 patent.
9. The ‘516 patent issued on August 30, 2011.
10. The Provisional, the ‘858 patent, and the ‘516 patent all relate to a method of
recovering oil from a by-product of ethanol production known as thin stillage.
11. The ‘858 and ‘516 patents expressly incorporate the disclosure of the Provisional
patent application. (‘858 patent, Col. 1, lines 4-6; ‘516 patent, Col. 1, lines 4-6).
12. The Provisional discloses that Example 1 is “based on actual experimental data”
to “demonstrat[e] the efficacy of the present method.” (Exhibit A, p. 4, lines 16-17, 20).
13. The Provisional describes Example 1 with reference to Figures 1 and 2. (Id., p. 4,
lines 19-20).
14. With reference to Figure 2, the Provisional states that “centrifuge 14 recovers
usable oil” and that the resulting syrup has “far less oil in view of the preceding recovery step.”
(Id., p. 5, lines 13-15).
858
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15. The Provisional describes the resulting syrup coming out of the centrifuge as
“substantially free of oil.” Id., p. 5, line 16).
16. In the example depicted in Figures 1 and 2 of the Provisional, the total volume of
thin stillage of 87.5 GPM (gallons per minute) was an actual measured value obtained from
experimentation. (Exhibit B, Winsness dep. 235:13 – 236-5).
17. Figures 1 and 2 of the Provisional list the moisture content, oil content and solids
content of the thin stillage in three different ways: Gallons per minute (GPM), pounds per hour,
and as a percentage by weight.
18. Prior to evaporation, the moisture content of thin stillage as stated in Figures 1
and 2 of the Provisional was a measured value of 92%. (Exhibit B, Winsness dep. 221:6-7).
19. In the example depicted in Figures 1 and 2 of the Provisional, the stated
percentage of oil in thin stillage of 1.3% was obtained from actual laboratory analytical testing of
the thin stillage. (Exhibit B, Winsness dep. 236:6-21).
20. The ‘858 and ‘516 patents disclose that when 26,146 pounds of water is removed
from the thin stillage identified in Figures 1 and 2, a syrup is created that has a moisture content
of approximately 80.0% by weight and about 17% solids by weight. (E.g., ‘858 patent, Col. 4,
lines 29-33). Figures 1 and 2 also show that the same syrup has an oil content of approximately
3.2% by weight. Figures 1 and 2 also display the moisture, oil and solids content in terms of
gallons per minute and pounds per hour.
21. The ‘858 patent specification discloses that when the syrup described in Figure 2
is fed at a rate of approximately 35 gallons per minute, the centrifuge recovers oil at a rate of
about 538 pounds per hour. The resulting de-oiled syrup exiting the centrifuge is disclosed to
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have a moisture content of 82.5% by weight, and as a result of the oil removed, is disclosed to be
“substantially free of oil.” (‘858 patent, Col. 4, lines 48-54).
22. Figure 2 of the ‘858 patent also shows that the de-oiled syrup leaving the
centrifuge has a moisture content of 82.5% by weight. The moisture content percentage of
82.5% can be verified by dividing the moisture pounds per hour stated in Figure 2 (13,944) by
the total pounds per hour of the syrup as stated in Figure 2 (16,892) and multiplying by 100.
Likewise, the oil content percentage can be determined by dividing the oil pounds per hour stated
in Figure 2 (28) by the total pounds per hour of the syrup stated in Figure 2 (16,892) and
multiplying by 100. Using this calculation (i.e., 28 ÷ 16,892 x 100), the oil content percentage of
the de-oiled syrup is 0.166%.
23. Below is a portion of Figure 2 of the Provisional:
(Exhibit A, Figure 2).
24. Beneath the “Oil Recovered” table in Figure 2 of the Provisional is the statement:
“We cover [sic] the majority of the oil, in this example we show 95% recovery.” (Id.).
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25. The 95% recovery value can be verified by dividing the oil recovered value in
pounds per hour (538) by the oil content in pounds per hour of the syrup before it was processed
through the centrifuge (566) and multiplying by 100 (e.g., 538÷566 x 100 = 95.05, or 95%), or
by taking the percentage of the oil removed from the syrup (i.e.., 3.2% - 0.166% = 3.034%) and
dividing it by the percentage of the oil in the syrup before processing (i.e. 3.034% ÷ 3.2 x 100 =
94.8, or about 95%).
26. A 95% oil recovery rate as stated in the Provisional means 5% of the oil originally
in the syrup prior to processing through the centrifuge remains in the de-oiled syrup after it has
been processed through the centrifuge. The oil content percentage of the de-oiled syrup postprocessing
through the centrifuge can be verified by comparing either the pounds per hour or the
percentage values for the oil listed in Figure 2 for the pre-processed syrup and the post-processed
syrup (e.g., 28÷566 x 100 = 4.95, or 5%; or 0.166%÷3.2% x 100 = 5.19, or 5%)
27. Plaintiff does not dispute that the de-oiled syrup coming out of the centrifuge is
substantially free of oil. (See Plaintiff’s Opening Claim Construction Brief Regarding U.S.
Patent No. 7,601,858, Master Dkt. No. 118, p. 13, lines 1-5 and 11-13; See also Order on Claim
Construction, Master Dkt. No. 169, p. 20, lines 21-22 (“Plaintiffs do not argue against
Defendants’ assertion that the syrup stream leaving the oil recovery step is substantially free of
oil.”)).
B. Oil Recovery Process of Cardinal, Big River and Lincolnland
28. Plaintiff conducted an on-site inspection of each of the ICM-related ethanol plant
defendants and obtained four samples marked A, B, C, and D of the syrup that is fed into the
Tricanter centrifuge used by each plant, and of the de-oiled syrup that exits the Tricanter
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centrifuge. Plaintiff retained samples A and B, and each ethanol plant retained samples C and D.
(Weryauch Dec. ¶ 4).
29. Plaintiff had the A samples analyzed by Midwest Laboratories, Inc., and each of
the ICM-related ethanol plant defendants had the C samples analyzed by Midwest Laboratories.
(Weyrauch Dec. ¶ 4).
30. A copy of the Midwest Laboratories analysis performed on Plaintiff’s samples
from Cardinal is attached as Exhibit C. A copy of the Midwest Laboratories analysis performed
on Cardinal’s samples is attached as Exhibit D. Sample 8 represents syrup that is fed to the
Tricanter centrifuge and sample 12 represents syrup that exited the Tricanter centrifuge.
(Weyrauch Dec. ¶ 5). Samples 8C and 12C were tested twice, yielding the following oil content
results for each tested sample:
Sample ID: 100611-4 (8C) Sample ID: 101911-4 (8C dup) CE-8A
As sent:
Acid Hydrolysis Fat: 5.74% 6.57% 5.89%
Sample ID: 101011-4 (12C) Sample ID: CE152-2 (12C) CE-12A
As sent:
Acid Hydrolysis Fat: 2.86 2.31% 2.74%
31. Comparing the percentage of oil in sample 12 against the percentage of oil in
sample 8 results in the percentage of oil remaining in the syrup after processing through the
centrifuge, as follows:
2.86÷5.74 x 100 = 49.8%
2.31÷6.57 x 100 = 35.2%
2.74÷5.89 x 100 = 46.5%
32. BRRWB has two separate sets of evaporators and a separate Tricanter centrifuge
for processing syrup from each set of evaporators, which are referred to as side 1 and side 2. A
copy of the Midwest Laboratories analysis performed on Plaintiff’s samples from BRRWB is
REDACTED
REDACTED
REDACTED
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attached as Exhibit E. A copy of the Midwest Laboratories analysis performed on BRRWB’s
samples is attached as Exhibit F.
33. For Exhibits E and F, sample 5 represents syrup that is fed to the Side 1 Tricanter
centrifuge, andsample 20 represents syrup that exited the Side 1 Tricanter centrifuge. (Weyrauch
Dec. ¶ 6). Both sample 8C and 20C were tested twice, yielding the following results:
Side 1
Sample ID: (WB5C) (WB5Cdup) (WB5A)
As sent:
Acid Hydrolysis Fat: 2.33% 2.24% 2.57%
Sample ID: (WB20C) (WB20Cdup) (WB20A)
As sent:
Acid Hydrolysis Fat: 1.23% 0.75% 1.21%
34. For Exhibits E and F, sample 14 represents syrup that is fed to the Side 2
Tricanter centrifuge, and sample 22 represents syrup that exited the Side 2 Tricanter centrifuge.
(Id.). Both sample 14C and 22C were tested twice, yielding the following results:
Side 2
Sample ID (WB14C) (WB14Cdup) (WB14A)
As sent:
Acid Hydrolysis Fat: 2.01% 2.04% 2.72%
Sample ID (WB22C) (WB22Cdup) (WB22A)
As sent:
Acid Hydrolysis Fat: 1.47% 0.77% 1.82%
35. Comparing the percentage of oil in sample 20 against the percentage of oil in
sample 5 results in the percentage of oil remaining in the syrup after processing through the side
1 centrifuge, as follows:
1.23÷2.33 x 100 = 52.8%
0.75÷2.24 x 100 = 33.5%
1.21÷2.57 x 100 = 47.1%
REDACTED
REDACTED
REDACTED
REDACTED
REDACTED
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36. Comparing the percentage of oil in sample 22 against the percentage of oil in
sample 14 results in the percentage of oil remaining in the syrup after processing through the side
2 centrifuge, as follows:
1.47÷2.01 x 100 = 73.1%
0.77÷2.04 x 100 = 37.7%
1.82÷2.72 x 100 = 66.9%
37. A copy of the Midwest Laboratories analysis performed on Plaintiff’s samples for
BRRG is attached as Exhibit G. A copy of the Midwest Laboratories analysis performed on
BRRG’s samples is attached as Exhibit H.
38. For Exhibits G and H, sample 4 represents syrup that is fed to the Tricanter
centrifuge, and sample 11 represents syrup that exited the Tricanter centrifuge. (Weyrauch Dec.
¶ 7). Both sample 4C and 11C were tested twice, yielding the following results:
Sample ID (G4C) (G4Cdup) (G-4A)
As sent:
Acid Hydrolysis Fat: 2.44% 2.59% 2.90%
Sample ID (G11C) (G11Cdup) (G-11A)
As sent:
Acid Hydrolysis Fat: 0.77% 0.75% 1.50%
39. Comparing the percentage of oil in sample 11 against the percentage of oil in
sample 4 results in the percentage of oil remaining in the syrup after processing through the side
1 centrifuge, as follows:
0.77÷2.44 x 100 = 31.6%
0.75÷2.59 x 100 = 29.0%
1.50÷2.90 x 100 = 51.7%
REDACTED
REDACTED
REDACTED
REDACTED
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40. A copy of the Midwest Laboratories analysis performed on Plaintiff’s samples for
Lincolnland is attached as Exhibit I. A copy of the Midwest Laboratories analysis performed on
Lincolnland’s samples is attached as Exhibit J.
41. For Exhibits I and J, sample 6 represents syrup that is fed to the Tricanter
centrifuge,andsample 9 represents syrup that exited the Tricanter centrifuge. (Weyrauch Dec. ¶
8). Both sample 6C and 9C were tested twice, yielding the following results:
Sample ID: (6C) (6Cdup) (6A)
As sent:
Acid Hydrolysis Fat: 7.96% 7.49% 7.64%
Sample ID: (9C) (9Cdup) (9A)
As sent:
Acid Hydrolysis Fat: 1.39% 1.21% 1.40%
42. Comparing the percentage of oil in sample 9 against the percentage of oil in
sample 6 results in the percentage of oil remaining in the syrup after processing through the
centrifuge, as follows:
1.39÷7.96 x 100 = 17.5%
1.21÷7.49 x 100 = 16.2%
1.40÷7.64 x 100 = 18.3%
43. Each ICM-related ethanol plant defendant recovers oil from syrup using a
Tricanter centrifuge, which is not a disk-stack centrifuge. None of the ICM-related ethanol plant
defendants use a disk-stack centrifuge to process syrup to recover oil. (Weyrauch Dec. ¶ 9).
III. SUMMARY JUDGMENT STANDARD
Summary judgment is proper if the evidence before the Court “show[s] that there is no
genuine issue as to any material fact and that the movant is entitled to judgment as a matter of
law.” Fed. R. Civ. P. 56(c); see also Celotex Corp. v. Catret, 477 U.S. 317, 322 (1986). A
“material fact” is one that “might affect the outcome of the suit under the governing law.”
REDACTED
REDACTED
REDACTED
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Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A factual issue is “genuine” only if a
reasonable trier of fact could find for the non-moving party. Id. In considering a motion for
summary judgment, the court must examine all the evidence in the light most favorable to the
nonmoving party. United States v. Diebold, Inc., 369 U.S. 654, 655 (1962). The moving party
bears the initial burden to show the absence of genuine issues of material fact. Celotex, 477 U.S.
at 323 (1986).
Once “a properly supported motion for summary judgment is made,” the non-moving
party bears the burden to “set forth specific facts showing that there is a genuine issue for trial.”
Liberty Lobby, 477 U.S. at 250 (internal quotation marks and citation omitted). The party
opposing summary judgment “may not rest upon mere allegation or denials of his pleading.” Id.
at 248, 256; see also Cleveland v. Porca Co., 38 F.3d 289, 295 (7th Cir. 1994). Rather, the
opposing party must cite “to particular parts of materials in the record,” or show that the moving
party “cannot produce admissible evidence to support the fact.” Fed. R. Civ. P. 56(c)(1); see
also Vukadinovich v. Bd. of Sch. Trs., 278 F.3d 693, 699 (7th Cir. 2002) (stating that “[t]he
nonmovant will successfully oppose summary judgment only when it presents ‘definite,
competent evidence to rebut the motion’”). Moreover, the opposing party’s burden cannot be
met with conclusory statements or “self-serving allegations that are otherwise without
evidentiary support.” Cliff v. Bd. of Sch. Comm’rs, 42 F.3d 403, 408 (7th Cir. 1994) (citing
McDonnell v. Cournia, 990 F.2d 963, 969 (7th Cir. 1993)). Finally, summary judgment is
equally appropriate in a patent case as it is in any other type of case. C.R. Bard, Inc. v. Advanced
Cardiovascular Sys., Inc., 911 F.2d 670, 672 (Fed. Cir. 1990).
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IV. PATENT INFRINGEMENT STANDARD
A patent infringement analysis consists of two steps. Markman v. Westview Instruments,
Inc., 52 F.3d 967, 976 (Fed. Cir. 1995). In the first step, referred to as claim construction, “the
court ‘construes’ the patent claims by establishing the scope and boundaries of the subject matter
that is patented, as a matter of law.” Netword, LLC v. Centraal Corp., 242 F.3d 1347, 1350
(Fed. Cir. 2001). The Court has already completed this first step which concluded in the Court’s
Order on Claim Construction (Master Dkt. No. 169) and Order on Motion for Clarification
(Master Dkt. No. 214) (collectively, “Markman Order”) setting forth the claim construction chart
reproduced here:
CLAIM CONSTRUCTION CHART
Claim Term Construction
“concentrate”/“concentrated
byproduct”/“concentrated thin stillage”
“syrup containing water, oil, and solids
resulting from the concentrating or evaporating
process”
“mechanically processing” “to subject to a mechanical device (or devices)
to effect a particular result”
“heating and mechanically processing the
concentrate/concentrated
byproduct/concentrated thin stillage to separate
the oil from the concentrate/concentrated
byproduct/concentrated thin stillage”
“the Concentrate Term (as construed by the
Court in this Order) subjected to heat and a
mechanical device (or devices) to extract a
product that is substantially oil from the
Concentrate Term (as construed by the Court
in this Order) and the concentrate stream
coming out of the mechanical device (or
devices) is substantially free of oil”
“centrifuging the concentrate to recover oil” “processing the concentrate (as defined by the
Court in this Order) with a centrifuge to
separate the oil from the concentrate so that the
oil stream coming out of the centrifuge is
substantially oil and the remaining concentrate
stream coming out of the centrifuge is
substantially free of oil”
16
Of particular relevance here is the method by which one determines whether or not the
syrup stream coming out of the centrifuge (or mechanical device) is “substantially free of oil.” It
is undisputed that to determine if the de-oiled syrup is “substantially free of oil,” the amount of
oil in the de-oiled syrup after it leaves the centrifuge is compared against the amount of oil in the
syrup before it enters the centrifuge. Plaintiff did not contest Defendants Markman briefing that
this determination is made by comparing the amount of oil remaining in the concentrate stream
coming out of the centrifuge with the amount of oil in the concentrate stream before the recovery
step. (See Defendants’ Joint, With the Exception of Adkins Energy, LLC, Claim Construction
Brief Regarding U.S. Patent No. 7,601,858, Master Dkt. No. 120, pp. 24-25 (urging a
comparison of the oil amounts in the pre- and post-centrifuge concentrate)). The Court also
found, “Plaintiffs do not argue against Defendants’ assertion that the syrup stream leaving the oil
recovery step is substantially free of oil.” Order on Claim Construction, Master Dkt. No. 169, p.
20, lines 21-22; see also Plaintiff’s Opening Claim Construction Brief Regarding U.S. Patent No.
7,601,858, Master Dkt. No. 118, p. 13, lines 1-5 and 11-13.
When a patent claim incorporates words of degree, the trial court must determine whether
the patent's specification provides some standard for measuring that degree. Seattle Box Co., Inc.
v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984). The trial court must
decide whether one of ordinary skill in the art would understand what is claimed when the claim
is read in light of the specification. Id. The specifications of the ‘858 patent and the ‘516 patent,
e.g., Figure 2 thereof, inform a person of ordinary skill in the art of how to determine whether a
concentrate stream is “substantially free of oil.” Johns Hopkins Univ. v. CellPro Inc., 152 F.3d
1342, 1355 (Fed. Cir. 1998) (upholding a construction of the words “substantially free,” which
was informed by analyzing a table in the patent specification which, as the “only disclosed
17
embodiment of the claimed [invention],” was “highly indicative of the scope of the claims”); see
also Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1333-34 (Fed. Cir. 2010) (discussing
use of the term “substantially” and turning to the specification to provide suitable examples of
groups “not interfering substantially” with hybridization to defeat an indefiniteness challenge);
Young v. Lumenis, Inc., 492 F.3d 1336, 1346 (Fed. Cir. 2007) (interpreting the term “near” based
on the patent specification and particularly a patent figure that “provide[d] a standard for
measuring the meaning of the term ‘near’”).
The Johns Hopkins case is illustrative. The patents at issue in Johns Hopkins pertained
generally to relatively pure suspensions of immature blood cells and monoclonal antibodies used
to produce such suspensions. Johns Hopkins, 152 F.3d at 1346. These immature cells, known as
“stem” cells, develop into many different forms of mature blood cells, including lymphoid cells
(T-cells and B-cells) and myeloid cells (red cells, platelets, and granulocytes). Id. Because stem
cells are killed by radiation therapy, these cells must be replaced in leukemia patients who have
undergone this treatment. Id. While bone marrow transplants can provide a patient with new
stem cells, this procedure carries risks. Notably, the presence of mature cells in transplanted
bone marrow can give rise to Graft Versus Host Disease (GVHD), a potentially fatal condition.
Id. Accordingly, one of the stated objectives of the invention of the patents-in-suit “is to provide
a method for preparing a cell population useful for stem cell transplantation that is enriched in
immature cells and substantially free of mature myeloid and lymphoid cells. Id. at 1347
(emphasis added). The value of the patents at issue in Johns Hopkins, thus was the method’s
ability to minimize the presence of certain cells.
In Johns Hopkins, the claims contained a “substantially free” limitation, but the
specification of the patent did not define “substantially free.” Id. at 1349. The specification did,
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however, provide an example in a table that supported a suspension having 0-10% of the
unwanted cells. Id. at 1349, 1355-56. The Federal Circuit agreed with the district court that
“substantially free” encompassed the example, but no further. Id. at 1356 (affirming the district
court’s construction of “substantially free of native lymphoid and myeloid cells” “as requiring no
more than 10%” of such cells).
An approach similar to that in Johns Hopkins is appropriate here. The only support in the
patents-in-suit for the “substantially free of oil” limitation is found in the actual test data
described in Figure 2 of the Provisional, which is incorporated by reference into the specification
of the ‘858 patent and the ‘516 patent. Figure 2 of the Provisional expressly states that the oil
recovery represented in Figure 2 is 95% of the oil originally contained in the syrup prior to
processing through the centrifuge. This express statement informs the person of skill in the art
that only 5% of the original oil that was in the syrup prior to processing through the centrifuge
remains in the de-oiled syrup after it has been processed through the centrifuge. The data listed
in Figure 2 is consistent with the express oil recovery claim of 95%.
With reference to Figure 2, the syrup entering the centrifuge has an oil content of 566
lbs/hr. Of that amount, the oil recovery step (or centrifuge) recovers 538 lbs/hr, and the
remaining oil, or 28 lbs/hr, stays in the syrup stream that exits the centrifuge. Likewise, the
syrup contains 3.2% oil before the syrup enters the centrifuge, but after the syrup has been
processed through the centrifuge to remove oil, the syrup contains only 0.166% oil. As noted
above, this data supports the express claim in the patents-in-suit that 95% of the oil is recovered
by the claimed method, and only 5% of the oil remains in the de-oiled syrup. The patents-in-suit
demonstrate that the syrup leaving the centrifuge is “substantially free of oil” where it only has
about 5% of the original oil that was in the syrup prior to processing through the centrifuge.
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Defendants pointed out that the “substantially free of oil” standard was the result of this
comparison during Markman and Plaintiff did not challenge it, thus waiving any challenge. (See
Defendants’ response brief, Master Dkt. No. 120, pp. 24-25, and Plaintiff’s Reply, Master Dkt.
121 (passim)).
The second step of the infringement analysis is undertaken here and asks the trier of fact
to compare the properly construed claims to the method accused of infringement. Markman, 52
F.3d at 976. Patent infringement must be proven by a preponderance of the evidence, Advanced
Cardiovascular Sys., Inc. v. Scimed Life Sys., Inc., 261 F.3d 1329, 1336 (Fed. Cir. 2001), which
requires proving that infringement was more likely than not to have occurred. See also Liberty
Lobby, 477 U.S. at 252 (stating that “the inquiry involved in a ruling on a motion for summary
judgment…implicates the substantive evidentiary standard of proof that would apply at the trial
on the merits”).
Infringement may only be found where the accused method contains each limitation of
the claim, either literally or under the doctrine of equivalents. Deering Precision Instruments,
L.L.C. v. Vector Distribution Sys., Inc., 347 F.3d 1314, 1324 (Fed. Cir. 2003). To find literal
infringement, each and every element of the claim must be present in the accused method.
Johnson v. IVAC Corp.. 885 F.2d 1574 (Fed. Cir. 1989). Where the compared device does not
possess each and every limitation in at least one of the patent claims, as properly construed, then
the patent is not literally infringed. Markman, 52 F.3d at 976 (Fed. Cir. 1995). Even if literal
infringement is not found, a patent claim can still be infringed under the doctrine of equivalents.
This doctrine asks whether, on a limitation-by-limitation basis, the accused method performs the
same function, in the same way, to achieve the same result as the claimed method. GraverTank
& Mfg., Co. v. Linde Air Products Co., 339 U.S. 605, 608 (1950); Warner-Jenkinson Co. v.
20
Hilton Davis Chem. Co., 520 U.S. 17, 29 (1997). The doctrine of equivalents does not, however,
allow for the elimination of “meaningful structural and function limitations of the claim on
which the public is entitled to rely in avoiding infringement.” Conopco, Inc., v. May Dep’t
Stores Co., 46 F.3d 1556, 1562 (Fed. Cir. 1994).
V. ARGUMENT
A. Non-Infringement of the ‘858 Patent
Each claim of the ‘858 patent contains a limitation requiring the syrup coming out of
centrifuge (or mechanical device) to be “substantially free of oil.” The only example in the ‘858
patent of such a syrup is one in which the oil content in the de-oiled syrup is about 5% of the
original amount of oil contained in the syrup before it was processed through the centrifuge.
When the oil content percentages of the de-oiled syrup are compared against the oil content
percentages of the pre-processed syrup for Cardinal Ethanol, BRRWB, BRRG and Lincolnland,
it is clear that none of the defendants’ oil recovery percentages are even close to the required
95% oil recovery disclosed in the patents-in-suit, and the remaining syrup oil percentages are not
even close to achieving the low 5% oil content disclosed in the patents-in-suit. Thus, the oil
recovery processes of defendants do not infringe the ‘858 patent.
1. Whether or Not the Concentrate Exiting the Recovery Process is “Substantially Free
of Oil” is a Comparison of the Amount of Oil Remaining in the Concentrate Stream
to the Amount of Oil That Was in the Concentrate Before the Recovery Step.
Each of the independent claims of the ‘858 patent is construed by the Court’s Markman
Order to contain the limitation that the concentrate stream coming out of the mechanical device
(claims 1, 10, and 16) or centrifuge (claim 8) is “substantially free of oil.” The specifications of
the patents-in-suit make clear that the process of feeding syrup into the centrifuge to recover oil
from the syrup reduces the oil content of the syrup. According to the ‘858 patent, “[a]t an infeed
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rate of approximately 35 gallons per minute, this centrifuge 14 recovers usable oil at a rate of
538 pounds per hour and produces syrup having a moisture content of 82.5%, but with far
less oil in view of the preceding recovery step. (‘858 patent, Col. 4, lines 48-53). The syrup
that leaves the centrifuge is characterized in the ‘858 patent as being “substantially free of oil.”
(‘858 patent, Col. 4, line 54). As this statement makes clear, the “substantially free of oil”
limitation is determined by comparing the oil content in the de-oiled syrup stream after the
recovery step with the oil content in the concentrate stream before the recovery step.
As illustrated in Figure 2 of the ‘858 patent the oil content in the syrup can be determined
as a percentage of oil by weight in the syrup. (See Facts ¶¶ 19, 21, 25, supra). In this respect,
the ‘858 patent supports the express claim in the Provisional that about 95% of the oil entering
the centrifuge is recovered, and about 5% of the oil remains in the syrup that exits the centrifuge.
(See Facts ¶¶ 23-25, supra). Consequently, a syrup coming out of the centrifuge containing
about 5% of the oil entering the centrifuge provides an upper bound on the meaning of
“substantially free of oil.” Such a conclusion is consistent with the express statement in the
Provisional application, that “95%” of the oil is recovered. (See Facts ¶ 23, supra).
Consequently, the largest percentage of oil remaining in the de-oiled syrup stream after the
recovery step that the ‘858 patent supports is about 5% of the oil that was in the concentrate
before the recovery step.
Each independent claim of the ‘858 patent requires that the concentrate leaving the
centrifuge must be “substantially free of oil.” Because processes used by Cardinal, BRRWB,
BRRG and Lincolnland result in a syrup leaving the centrifuge that has an oil content that vastly
exceeds the 5% “substantially free of oil” standard, there is no infringement of any independent
claim of the ‘858 patent. Moreover, “t is axiomatic that dependent claims cannot be found
22
infringed unless the claims from which they depend have been found to have been infringed.”
Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1545, 1553 & n.9 (Fed. Cir. 1989). Cardinal’s
oil content percentage remaining in the post-centrifuge processed syrup ranges between 35.2%
and 49.8%. (Facts ¶ 31). BRRWB’s oil content percentage remaining in the post-centrifuge
processed syrup ranges between 33.5% and 73.1%.2 (Facts ¶¶ 35-36). BRRG’s oil content
percentage remaining in the post-centrifuge processed syrup ranges between 29.0% and 51.7%.
(Facts ¶ 39). Lincolnland’s oil content percentage remaining in the post-centrifuge processed
syrup ranges between 16.2% and 18.3%, a factor of over three times the 5% value that the
patents-in-suit relate to syrup that is substantially free of oil. (Facts ¶ 42). Because the
percentage of oil remaining in the post-centrifuge syrup of the ICM-related ethanol plant
defendants is significantly greater than 5%, no finding of infringement under the doctrine of
equivalents is sustainable.3 Thus, as a matter of law, the ICM-related ethanol plant defendants
do not infringe any claim of the ‘858 patent, either literally or under the doctrine of equivalents.
Because there can be no liability for contributory infringement or inducement of infringement in
the absence of direct of infringement, defendants ICM and Vander Griend are also entitled to
summary judgment of noninfringement. Ago Mfg. Co. v. Convertible Top Replacement Co., 365
U.S. 336, 341-42 (1961) (“There can be no contributory infringement in the absence of a direct
infringement.”).
2 The duplicate analysis of sample WB20Cdup and WB22dup appears to disagree with the respective related
samples, however, for purposes of summary judgment, the results for those samples are presented on their face
without any admission of the accuracy of the testing results.
3 The oil recovery results stated for Cardinal and Lincolnland are not solely the result of the methods claimed in the
‘858 and ‘516 patent, in that further processing with the use of a chemical additive is employed by Cardinal and
Lincolnland. As such, the oil recovery results are overstated. Even with the added effect of the chemical additive,
neither Cardinal nor Lincolnland are able to achieve a 95% oil recovery rate that leaves the post-processed syrup
with only about 5% oil remaining in the syrup.
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B. Non-Infringement of the ‘516 Patent
The same Markman Order construing the claims of the ‘858 patent is applicable to the
claim construction of the ‘516 patent. Accordingly, the “substantially free of oil” limitation is
applied by comparing the oil content in the syrup/concentrate stream after the recovery step with
the oil content in the syrup/concentrate stream before the recovery step. As discussed above, the
patents-in-suit, which are identical, demonstrate that a syrup exiting the centrifuge is
“substantially free of oil” when about 95% of the oil in the syrup is removed by the centrifuge,
leaving about 5% of the oil in the post-processed syrup. A comparison of the oil content
percentages of the de-oiled syrup leaving the centrifuge against the oil content percentages of the
syrup fed to the centrifuge, as reflected in Plaintiff’s testing of the ICM-related ethanol plant
defendants, establishes that none of the ICM-related ethanol plant defendants are achieving a
95% oil recovery with only about 5% of the oil remaining in the post-centrifuge processed syrup.
As a result, the ICM-related ethanol plant defendants and defendants ICM and Vander Griend
are entitled to summary judgment of non-infringement of the ‘516 patent as well.
1. The Court’s Markman Order Also Informs the Construction of the ‘516 Patent
Claims.
Independent claim 1 of the ‘516 patent contains the limitation: “mechanical processing
the thin stillage concentrate to separate oil from the thin stillage concentrate.” This same
limitation4 was construed in connection with the ‘858 patent to require, in relevant part, that “the
concentrate stream coming out of the mechanical device (or devices) is substantially free of oil.”
Order on Motion for Clarification (Court Master Docket No. 214). The construction of the ‘858
patent claims controls the interpretation of claim 1 of the ‘516 patent because the ‘516 patent is a
4 The only difference between the ‘516 claim limitation and that found in the ‘858 patent is the term “thin stillage
concentrate” (‘516 patent) instead of “concentrated thin stillage” (‘858 patent), but this distinction lacks any
substance.
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continuation of the ‘858 patent and as such, it contains the identical disclosure as the ‘858 patent.
Consequently, the analysis provided relative to the ‘858 patent claims is equally applicable to
claim 1 of the ‘516 patent.
Independent claim 7 of the ‘516 patent contains the limitation: “disk stack centrifuging
oil from the thin stillage concentrate to form a substantially oil free concentrate.” The ordinary
meaning of this limitation is the production of a concentrate that is “substantially free of oil”
which is, again, co-extensive with the analysis provided above relative to the ‘858 patent.
Moreover, since none of the ICM-related ethanol plant defendants use a disk stack centrifuge,
there can be no infringement of claim 7 of the ‘516 patent. (Weyrauch Dec. ¶ 9).
Thus, whether with respect to independent claims 1 of 7 of the ‘516 patent, to be
“substantially free of oil,” the percentage of oil remaining in the concentrate stream after the
recovery step must be about 5%.5
For the same reasons discussed relative to the ‘858 patent, as a matter of law the ICMrelated
ethanol plant defendants do not infringe any of the claims of the ‘516 patent, and
defendants ICM and Vander Griend are not liable for contributory infringement or inducement of
infringement.
VI. CONCLUSION
Because none of the ICM-related ethanol plant defendants infringe, either literally or
under the doctrine of equivalents, any claim of either the ‘858 patent or the ‘516 patent, they
along with defendants ICM and Vander Griend, respectfully request this Court to grant their
motion for summary judgment of non-infringement.
5 This conclusion is also supported by the fact that the ‘516 patent relates back to the Provisional, which expressly
recites that “95%” of the oil is recovered.
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Dated: May 22, 2012 Respectfully submitted,
/s John M. Weyrauch
John M. Weyrauch (MN221,879)
Paul P. Kempf (MN239,215)
DICKE, BILLIG & CZAJA, PLLC
100 South Fifth Street, Suite 2250
Minneapolis, MN 55402
Telephone: (612) 767-2511
Facsimile: (612) 573-2005
jmweyrauch@dbclaw.com
pkempf@dbclaw.com
ATTORNEYS FOR DEFENDANTS ICM, INC., DAVID
VANDER GRIEND, CARDINAL ETHANOL, LLC, BIG
RIVER RESOURCES WEST BURLINGTON, LLC, BIG
RIVER RESOURCES GALVA, LLC, AND
LINCOLNLAND AGRI-ENERGY, LLC
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CERTIFICATE OF SERVICE
The foregoing was filed electronically, under seal, this 22nd day of May 2012. Notice of
this filing will be sent to all attorneys of record in this case, by operation of the Court’s
Electronic Filing System, and via e-mail.
s/John M. Weyrauch
23rd
