November 24, 2014

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November 21, 2014

Special Master Issues Report and Recommendation on Claim Construction in Sewer Nozzle Patent Case

The Northern District of Georgia is well-known for its heavy reliance on special masters in patent cases. A recent study indicated that, though it accounts for just 4% of patent cases filed nationwide, the Northern District accounts for over 11% of the patent cases in which a special master is appointed.[1] In fact, if it were not for a rash of 17 related Central District of California patent cases in which a master was employed, the Northern District would lead the country in special master usage rate.

Federal Rule of Civil Procedure 53 lays out the scope and procedure of a master's appointment and defines the master's authority and duties in a given proceeding.  Among other things, a special master may "address pretrial and posttrial matters that cannot be effectively and timely addressed by an available district judge or magistrate judge of the district."[2] A special master may, unless the district judge's order otherwise directs, (a) regulate all proceedings; (b) take all appropriate measures to perform the assigned duties fairly and efficiently; and (c) if conducting an evidentiary hearing, exercise the appointing court's power to compel, take, and record evidence.[3] In patent cases, special masters are most often appointed to oversee the claim construction briefing and hearing and to issue a report and recommendation on claim construction to the presiding judge. Special masters are typically attorneys with impressive credentials and particular experience in the technology or subject matter at issue in the litigation. Absent unusual circumstances, the parties are required to compensate the special master for time spent performing the assigned duties.

In a case between KEG Kanalreinigungstechnik GmbH and KEG Technologies, Inc. ("KEG") and Reinhart Laimer, Sewer Equipment Corporation, USB-Sewer Equipment Corporation, Ulrich Simpfendörfer, USB-Duesen, USB-Sewer Equipment International GmbH, Patrick Savio, Daniel Long and Elke  Krantz ("Laimer") over patents drawn to "hydrodynamic nozzles" for cleaning the inside surface of underground sewer pipes, Chief Judge Julie Carnes appointed Special Master Gale R. Peterson of San Antonio, Texas to preside over the Markman claim construction hearing and submit a report and recommendation on claim construction to the Court. On January 11, 2013, Peterson issued his 93-page Report and Recommendation.

The two patents-in-suit, U.S. Patent Nos. 5,992,432 ("the '432 patent") and 6,089,243 ("the '243 patent"), generally relate to nozzles that may be connected to a water-supply hose and inserted into a pipe. High-pressure water is pumped through the nozzles, and channels in the nozzle turn the water into angled exits. These angled exits allow the force of the water to drive the nozzle through the pipe while the high-pressure water cleans debris from inside the pipe. According to the report, the inventors first filed patent applications in Germany, and then later filed applications in the United States after the applications had been translated into English. The special master noted that some of the claim language is "awkward" as a result of the translation. Laimer contended that some of the claim terms and phrases are beyond "awkward," and instead are "unintelligible" and render the claims indefinite and invalid under 35 U.S.C. § 112(2). The report stated that "although the master finds the claims amenable to construction, that does not necessarily mean that the claim passes muster under § 112(2).  That is a question for another day."    

KEG asserted claim 18 of the '432 patent and claims 1, 4, 10-16, and 18 of the '243 patent.  The parties agreed on constructions for at least 25 identified terms and phrases of the asserted claims. The special master then recommended the following constructions for the remaining disputed claim terms and phrases:

  • “disposed on same a like different part circles” in claim 18 in the ‘432 patent to mean  “arranged in at least one circle around the waterentrance opening.” 
  • “wherein the pressurized water-discharge openings and the channels are disposed inclined at a defined angle relative to an axis of the nozzle body” in claim 18 of the ‘432 patent to mean “the direction of the axis of the aperture(s) where the fluid under pressure exits the nozzle and the direction of the axis of the channels are inclined at a pre-determined angle relative to the center axis of the nozzle body.”
  • “wherein a conical-shaped water subdivider (8) with a defined cone angle (gamma) is disposed a base of the distribution chamber (7), disposed oppositely to the pressurized water-entrance opening (4), and centered relative to the axis of the nozzle body (1)” in claim 18 of the ‘432 patent to mean “a conical-shaped projection having a pre-determined cone angle, and extending upward (or upstream) along the center longitudinal axis of the nozzle body from the base of the distribution chamber, the apex of which is opposite (or downstream) the pressurized water-entrance opening.” 
  • “a defined and substantially semi-circular first radius (r1) follows to a cone base of the water subdivider (8), where a curvature of first radius (r1) is directed substantially opposite to the pressurized water-entrance opening (4) and where the first radius (r1) forms the base of the distribution  chamber (7)” in claim 18 of the ‘432 patent to mean “the distribution chamber has a pre-determined, substantially semi-circular shape extending from the central conical projection toward the outer portion of the nozzle; the radius of the semicircular shape extends in a direction substantially opposite the direction of fluid flowing into the pressurized water-entrance opening.” 
  • “wherein each channel (6a, 6b), inclined at an angle (α1,  α2) joins such into the distribution chamber (7) that outermost line of an outer diameter of the channels (6a, 6b)  aligns tangentially at the first radius (r1) or, respectively, merges continuously into the first radius (r1).” in claim 18 in the ‘432 patent to mean “the channels  are inclined relative to the central axis of the nozzle, and they lead from the discharge openings to the distribution chamber, and they have outer diameters that merge with the semi-circular radius of the distribution chamber  either tangentially at the first radius (r1) or, continuously into the first radius (r1).” 
  • “wherein the water guide channels partially converge into one another” in claim 1 in the ‘243 patent to mean that “the channels are discrete channels at their respective discharge ends, but upstream they start out together at the center of the distribution chamber.” 
  • “wherein unsteady cross-sectional changes of the cross-section of the water guide channels in a direction toward the discharge nozzle are absent” in claim 1 of the ‘243 patent to mean “in the vicinity of the discharge nozzles, the cross section of the water guide channels is continuous.”
  • “wherein the linear region (3.G) of the water guide channels (3) or, respectively, the pressurized water-discharge outlet openings (4) merge substantially tangentially to the deflection radius (r)” in claim 14 of the ‘243 patent to mean “the linear portion of the water  guide channel near the discharge outlet opening merges substantially tangentially with a semi-circular portion of the water guide channel; if there is no linear portion of the water guide channel, then the discharge outlet opening merges substantially tangentially with the semi-circular portion of the water guide channel.”
  • “water guide channels in the shape of channels having a circular cross-section” in claims 1 and 13 in the ‘243 patent to mean “the water guide channels are circular in cross section.” 
  • “wherein unsteady cross-sectional changes toward the discharge nozzle (5) are avoided” in claim 13 of the ‘243 patent to mean “in the vicinity of the discharge nozzles, the cross section of the water guide channels is generally continuous.”
  • “wherein a distance between a frontmost saddle point of an inner wall of a respective water guide channel and an opposite inner wall point of the water guide channel, disposed along an axially parallel straight line, is smaller than a thickness of a wall between the pressurized water-entry inlet opening and a respective pressurized water discharge outlet opening” in claim 1 in the ‘243 patent to mean “there is a smaller distance between a frontmost saddle point of an inner wall of a water guide channel and an opposite wall point  of the water guide channel, measured along a straight line  parallel to the center longitudinal axis of the nozzle body, than the thickness of a wall between the inlet opening and a respective pressurized water-discharge outlet opening.”

Neither party filed an objection or a motion to modify the special master's report and recommendation within the 21-day time period prescribed by Fed. R. Civ. P. 53(f), so it is expected that the report will be adopted by Chief Judge Carnes.

KEG Kanalreinigungstechnik GmbH et al. v. Reinhart Laimer et al., No. 1:11-cv-01948-JEC, Report and Recommendation, Docket No. 90 (N.D. Ga. Jan. 11, 2013).


[1] Jay Kesan et al., "A Study of the Role and Impact of Special Masters in Patent Cases," Federal Judicial Center (2009).

[2] Fed. R. Civ. P. 53(a).

[3] Fed. R. Civ. P. 53(c).

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About this Author

Preston H Heard, Womble Carlyle Law Firm, Intellectual Property Attorney
Partner

Preston Heard is an experienced patent litigation attorney who represents clients in a variety of industries, including the mechanical, computer and chemical sectors, in patent-related disputes.

 A registered patent attorney, Preston has represented patent clients in U.S. District Court in numerous states, as well as before the U.S. International Trade Commission. He works with patent owners to devise overall strategies to protect and enforce patent rights and to assess potential patent-related claims. He also works with clients to develop effective defenses against patent...

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