Shell Global Solutions (US) Inc. v. RMS Engineering, Inc. (782 F. Supp. 2d 317, 2011)

MEMORANDUM AND ORDER

KEITH P. ELLISON, District Judge.

In this patent infringement suit, the Court is asked to construe the asserted claims of U.S. Patent No. 6,221,318 (the “318 Patent”). A hearing was held on December 1,. 2010, during which the parties presented argument in support of their proposed constructions. This Court now construes the disputed claim terms as a matter of law under Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed.Cir.1995), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996).

In addition, pending before the Court are Defendants’ Motion for Summary Judgment on Equitable Estoppel and Laches (Doc. No. 58), Defendants’ Motion for Summary Judgment on Indefiniteness (Doc. No. 50), and Defendants’ Motion to Exclude Expert Testimony of Ye-Mon Chen (Doc. No. 87). Upon considering the Motions, all responses thereto, and the applicable law, the Court finds that the Motion for Summary Judgment on Equitable Estoppel and Laches (Doc. No. 58) should be denied, the Motion for Summary Judgment on Indefiniteness (Doc. No. 50) should be denied, and the Motion to Exclude Expert Testimony of Ye-Mon Chen (Doc. No. 87) should be denied as moot.

I. BACKGROUND

A. Technological Background

This patent infringement ease involves a device known as a spent catalyst distributor, which functions within the fluid catalytic cracking unit (“FCC Unit”) of an oil refinery. Refineries convert heavy crude oil, which cannot be directly used, into lighter products such as gasoline and diesel. Refineries use a process called “fluid catalytic cracking” (“FCC”) in order to perform this conversion. The FCC process takes place within the FCC Unit. The FCC Unit consists of two vessels — a reactor and a regenerator. Within the reactor, two streams of material are introduced: (1) liquid hydrocarbon feedstock (i.e. the crude oil); and (2) catalyst material that comes from the regenerator. The catalyst is made up of fine particles that are “fluidized” (meaning that the particles act like a liquid when lifted up or diffused by gas). Inside the reactor, the hydrocarbon is “cracked” — so called because the large hydrocarbon molecules constituting the heavy fractions are broken up into smaller molecules — by the presence of heat and the active catalyst. As the cracking process occurs, the heavy carbonaceous material or a “coke layer” deposits itself onto the catalyst, which is subsequently termed “spent catalyst.” The lighter hydrocarbon molecules are separated from the spent catalyst via cyclones and siphoned off into a separate “product recovery system.” The spent catalyst leaves the reactor via a “spent catalyst transfer line” and enters the regenerator through an “inlet conduit” and “spent catalyst distributor.” The spent catalyst distributor is the subject of Plaintiffs’ 318 patent. The spent catalyst distributor distributes the spent catalyst among heated air (which comes into the regenerator via an “air distributor”) so that the spent catalyst is once again “fluidized.” The heated air burns the carbon or coke off of the catalyst, thereby rendering the catalyst usable again. The regenerated catalyst leaves the regenerator by way of a “withdrawal well” or “hopper,” which takes the regenerated catalyst back to the reactor. The FCC process repeats itself. The continuous flow of catalyst between the reactor and generator allows the continuous processing of crude oil.

Shell Global Solutions (US), Inc. and Shell Oil Company (collectively, “Plaintiffs” or “Shell”) own the 318 Patent, which teaches a process and apparatus for distributing fluids in a container. Shell has alleged that the spent catalyst distributor installed during renovation of the FCC Unit in the Salt Lake City refinery (the “SLC Refinery”) of Tesoro Corporation and Tesoro Refining and Marketing Company (collectively, “Tesoro”) infringes claims 1-4 of the 318 Patent. RMS Engineering, Inc. (“RMS”) acted as a consultant to Tesoro during the renovation and installation process of the FCC Unit at the SLC Refinery. Tesoro and RMS (collectively, “Defendants”) have filed summary judgment motions asserting defenses of equitable estoppel, laches, indefiniteness, and anticipation. The parties now seek to construe certain terms contained in the patent-in-suit, as well as rulings on the summary judgment motions regarding equitable estoppel, laches, and indefiniteness.

B. Factual History

Shell and Tesoro have had an extensive and ongoing business relationship. In 1998, Shell sold its Anacortes, Washington refinery to Tesoro. (Baebler Decl. ¶ 4.) At the same time, Shell’s FCC expert, David Brosten, left Shell to join Tesoro as Tesoro’s FCC specialist. (Id.) During his employment with Tesoro, Brosten worked with Reza Sadeghbeigi, owner and president of RMS, in connection with the modification and repairs made to Tesoro’s refinery in Mandan, North Dakota. (Id.) In 2003, Brosten left Tesoro to rejoin Shell. (Id.)

In turn, RMS has had an extensive and ongoing business relationship with Shell. Sadeghbeigi worked with Shell on the revamp of the FCC Unit at the Premcor refinery in Port Arthur, Texas. (Sadeghbeigi Decl. ¶ 4.) He worked with Shell employees to obtain bids for Tesoro’s SLC Refinery revamp and a revamp of a FCC Unit in the Irving Oil Refinery in Canada. (Id.) Sadeghbeigi routinely corresponded with Brosten about proposed designs and projects, and in January 2004, provided Brosten with information about consultants and industry contacts for Shell’s business development. (Sadeghbeigi Decl. ¶ 3; Brosten Decl. ¶ 3; Doc. No. 58, Ex. 6; Doc. No. 58, Ex. 7.) In 2007, RMS was retained by the Lyondell refinery to evaluate the performance of its newly renovated FCC Unit, which used Shell technologies. (Id. ¶ 6.) As part of the evaluation, Sadeghbeigi discussed the Lyondell operations extensively with Brosten. (Id. ¶ 6.) RMS regularly conducts training seminars that Shell employees attend. (Id. ¶¶ 3, 5; Doc. No. 58, Ex. 9)

In 2004, Tesoro began the process of gathering bids for the 2007 revamp of the FCC Unit in its SLC Refinery. (Baebler Decl. ¶ 8.) The FCC Unit has been originally built in 1944. (Baebler Decl. ¶ 6.) Over the years, the FCC Unit had utilized several types of spent catalyst distributors. (Id. ¶ 7.) Around 1980, Tesoro modified the spent catalyst distributor to use a design that had a central riser with three fluid conveying arms extending outwardly and sloping downwardly at an angle of 30° from horizontal (the “1980 Design”). (Id.) The revamp involved the replacement of several devices within the FCC Unit, including the spent catalyst distributor, the standpipe, and the withdrawal well. (Id. ¶ 9.) Tesoro selected RMS to oversee the revamp of the regenerator of the FCC Unit. (Sadeghbeigi Decl. ¶ 7.)

In August 2004, Sadeghbeigi sent a Request for Quotation (“RFQ”) to various vendors, including Shell’s development partner Foster Wheeler and Brosten. (Baebler Decl. ¶ 11; Sadeghbeigi Decl. ¶ 10; Doc. No. 58, Ex. 10.) The RFQ requested proposals to modify several devices within the FCC Unit, but did not request a proposal for the revamp or modification of the spent catalyst distributor. (Doc. No. 58, Ex. 11 at 3, 5; Chen Decl. ¶ 7.) The RFQ did disclose the then-current design of the FCC Unit, including the 1980 Design spent catalyst distributor. (Sadeghbeigi Decl. ¶ 10; Doc. No. 58, Ex. 11.) The RFQ described the spent catalyst distributor as follows: “The spent catalyst enters the regenerator through a center hub having three (3) 22.5" ID distributor arms. These distributor arms are pointed downward at 30° from horizontal.” (Doc. No. 58, Ex. 11 at 10.)

On August 24, 2004, Brosten emailed Ye Mon Chen, Shell’s Fluid Catalytic Cracking Manager and Technology Licensing Manger in the American Region, about the RFQ. (Chen Decl. ¶ 2.) Brosten stated that Sadeghbeigi appeared to be using the “Shell CCET in his draw off-well design.” (Doc. No. 58, Ex. 15.) Brosten believed that the design was covered by Shell’s patents and asked Chen’s advice on how to proceed. (Id.)

On August 31, 2004, Rien Elfring, a Shell employee, spoke with Matthew Baebler, Director for Energy Excellence at Tesoro, about the revamp of the FCC Unit. (Baebler Decl. ¶ 11.) Elfring explained that he was concerned that the technical solution relating to the standpipe and withdrawal well contained in the RFQ might infringe upon one or more of Shell’s patents relating to standpipe and withdrawal well technologies. (Id.) Baebler told Elfring that the issue would be “cleared up” before Tesoro continued with the proposal and that Tesoro desired to have an “open art approach” to technology. (Id.) Elfring subsequently emailed several Shell employees, including Chen, about his conversation with Baebler. (Doc. No. 58, Ex. 16.) Elfring stated that he had explained to Baebler that “[Shell] suspect[s] the technical solution as developped [sic] by RMS for their revamp possibly infringes one or more of our patents ... I explained that as long as this is not resolved we, and Foster Wheeler, will decline to bid on the ITB as received from RMS.” (Id.) Elfring noted with concern that Tesoro had expressed its belief that, rather than licensing technology from a company like Shell, it hired RMS to “pick the best of all available technologies that are, or have become, open art.” (Id.) Elfring stated that it would be a “dangerous development for licensors if more companies start to believe this. All the more reason to make a fuss about this, and limit to open art playing field.” (Id.) Chen emailed the following response:

Very good insight and indeed this the thinking of Tesoro (and other mid-size refining companies). RMS is a major threat to us to destroy the licensing business because they operate under different rules (they don’t follow any) and they are cheap....

We need to keep in mind that Teroso is on RMS side, not ours. According to Dave Brosten, RMS has involved in all Teroso revamp playing the same role. When we play hard ball with RMS, be prepare how Teroso reacts. Teroso still think that if Shell GS declines to bid, no big deal. They think that they could go to S & W for the same solution, which they will find out not quite the case.

(Id.) That same day, Foster Wheeler wrote to Sadeghbeigi to inform him that it declined to bid on the RFQ and to “bring to [his] attention” two patents: U.S. Patent 6,228,328 B1 (the “328 Patent”) and European Patent 1,299,505 B1 (the “505 Patent”). (Doc. No. 58, Ex. 12; Sadeghbeigi Decl. ¶ 11.) The 328 Patent and the 505 Patent relate to the standpipe and withdrawal well technologies of the FCC Unit, not to the spent catalyst distributor. (Doc. No. 58, Exs. 13, 14; Sadeghbeigi Decl. ¶ 11.) Ye Mon Chen and Brosten are listed as inventors of the 328 Patent, while Chen is listed as inventor of the 505 Patent. (Doc. No. 58, Exs. 13, 14.)

On September 1, 2004, Ye Mon Chen called and spoke with Sadeghbeigi about his concerns that the proposed designs for the revamped standpipe and withdrawal well might infringe on one or more of Shell’s patents. (Sadeghbeigi Decl. ¶ 12.) Sadeghbeigi assured Chen that RMS would respect Shell’s intellectual property and did not intend to use any of Shell’s proprietary technology. He also informed Chen that RMS planned to use open art designs. (Sadeghbeigi Deck ¶ 12; Doc. No. 58, Ex. 17.)

Both Sadeghbeigi and Baebler believed that RMS and Shell had resolved Shell’s concerns with the standpipe and withdrawal well technology to be used in the 2007 revamp. (Baebler Deck ¶ 12; Sadeghbeigi Deck ¶ 13.) RMS sent another RFQ to Chen at Shell. (Doc. No. 58, Ex. 18.) Shell subsequently developed a proposal to provide Tesoro with its “catalyst circulation enhancement technology” (“CCET”). (Doc. No. 58, Ex. 21.) During the development of Shell’s proposal, Frank Khouw, an inventor of the 318 Patent, reviewed and commented on the “deal.” (Doc. No. 58, Ex. 20.) Chen emailed Shell’s final proposal to Sadeghbeigi and copied Khouw on the email. (Doc. No. 58, Ex. 21.) Shell’s final proposal including a drawing of the then-current design of the SLC Refinery’s FCC Unit, including the 1980 Design of the spent catalyst distributor. (Doc. No. 58, Ex. 22.) Tesoro ultimately decided to use an open art design instead of Shell’s proposed modification to the standpipe and withdrawal well. (Sadeghbeigi Deck ¶ 15.) Throughout its communication with RMS and Tesoro about the 2007 revamp of the FCC Unit, Shell was silent with respect to Tesoro’s use of the 1980 Design in the FCC Unit. (Baebler Deck ¶¶ 12, 13; Sadeghbeigi Deck ¶ 12; Chen Deck ¶ 8.)

In 2005, RMS modified the 1980 Design of the spent catalyst distributor to have five arms (instead of three arms) that slope downward at an angle of 20 (rather than 30) of horizontal (the “Modified Design”). (Baebler Deck ¶ 13; Sadeghbeigi Deck ¶ 16.) Sadeghbeigi spoke with and, on October 27, 2005, sent Brosten a drawing of the Modified Design to ask whether there were “any major flaws in this design.” (Doc. No. 58, Ex. 23; Sadeghbeigi Deck ¶ 17.) Brosten responded with some technical comments on the design, including a suggestion about the angle of the arms. (Doc. No. 58, Ex. 24; Sadeghbeigi Deck ¶ 17.) However, neither Brosten nor anyone else at Shell raised concerns that either the 1980 Design or the Modified Design might infringe any Shell patent. (Sadeghbeigi Deck ¶ 17; Baebler Deck ¶ 13.)

In April 2007, Tesoro shut down the SLC Refinery’s FCC Unit to conduct extensive modifications, including the replacement of the 1980 Design spent catalyst distributor with the Modified Design spent catalyst distributor. (Baebler Deck ¶ 14.) Tesoro spent approximately $22,252,000 on the revamp, approximately $167,000 of which related to the cost of manufacturing and installing the Modified Design spent catalyst distributor. (Id.; Sadeghbeigi Deck ¶ 18.)

During the same month, Sadeghbeigi communicated with Brosten about various spent catalyst distributor designs. In April 2007, Sadeghbeigi emailed Brosten a copy of a spent catalyst distributor design similar to the one used in the SLC Refinery’s FCC Unit. (Doc. No. 58, Exs. 25, 26; Sadeghbeigi Deck ¶ 22; Brosten Deck ¶ 4.) Brosten responded that the “added arms” of the updated design would make a big difference. (Doc. No. 58, Exh. 26A.) Bros-ten did not voice any objections to the use of the design as potentially infringing on any Shell patent. (Sadeghbeigi Decl. ¶ 22; Brosten Decl. ¶ 7.) Brosten and Sadeghbeigi also communicated about the Modified Design’s “afterburn issues,” and again about another spent catalyst distributor design. (Sadeghbeigi Decl. ¶ 23; Brosten Decl. ¶ 6; Doc. No. 58, Ex. 28.)

In March 2008, Sadeghbeigi and several Shell employees, including Chen, attended the National Petro Chemical and Refiners Association (“NPRA”) annual meeting. (Sadeghbeigi Decl. ¶ 24; Chen Decl. ¶ 9.) After a presentation by Martin Nieskins, who was employed as Shell’s “Global Manager Catalytic Cracking,” Sadeghbeigi voiced concerns about Shell’s catalytic cracking technology (Sadeghbeigi Decl. ¶ 24.) Specifically, Sadeghbeigi criticized Shell’s failure to maintain state of the art technology and to design reliable products. (Sadeghbeigi Decl. ¶ 24.) The next day, Sadeghbeigi apologized for his remarks before presenting his own paper discussing the 2007 revamp of the SLC Refinery’s FCC Unit. (Doc. No. 58, Exs. 29, 30.) During the presentation, Sadeghbeigi disclosed the Modified Design spent catalyst distributor that had been installed. (Id.; Chen Decl. ¶ 9.)

Soon after the NPRA meeting, Nieskins wrote to two Shell employees to advise them of Sadeghbeigi’s remarks. Nieskin described Sadeghbeigi’s behavior as “unprofessional,” and indicated that other attendees had been taken aback by the remarks. (Doc. No. 58, Ex. 30.) Ye Mon Chen also wrote to several Shell employees about Sadeghbeigi’s “damaging comments on Shell refineries’ reliabilities and Shell GS FCC technology.” (Doc. No. 58, Ex. 31.) Chen urged individuals who attended Nieskins’ presentation to send a note to the NPRA official urging NPRA officials to take action against Sadeghbeigi (Id.) At least one Shell employee did so. (Doc. No. 58, Exs. 32, 33.) NPRA eventually banned Sadeghbeigi from future events. (Sadeghbeigi Decl. ¶ 25; Doc. No. 58, Ex. 33.)

The matter did not end there. In response to Chen’s correspondence about the NPRA incident, Shell’s General Manager of Licensing asked, “Should we take legal action[?]” (Doc. No. 58, Ex. 34.) Chen responded, “[A] FCC colleague gave me a head-up of the technology implemented by Reza for Tesoro Salt Lake. Reza presented his paper before mine, and indeed there are two components that are potential infringement of Shell GS FCC patents.” (Doc. No. 58, Ex. 35.) Chen subsequently brought the matter to the attention of Shell’s legal department. (Chen Decl. IT 11.)

In November 2009, Sadeghbeigi first learned of the Modified Design’s potential infringement on the 318 Patent when he was advised of the filing of this lawsuit. (Sadeghbeigi Decl. ¶ 26.) Shell does not have any licensees of the 318 Patent. (Doc. No. 58, Ex. 38 at 6.)

II. MOTION FOR SUMMARY JUDGMENT ON EQUITABLE ESTOP-PEL AND LACHES

Defendants have moved for summary judgment on their defenses of equitable estoppel and laches. Laches and estoppel are equitable defenses, committed to the discretion of the trial court. A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020, 1028 (Fed.Cir.1992). Both defenses ultimately turn on underlying factual determinations. Id. at 1332-33. Summary judgment thus is appropriate only when there is no genuine issue of material fact and when the movant is entitled to judgment as a matter of law. Hemstreet v. Computer Entry Systems Corp., 972 F.2d 1290, 1292 (Fed.Cir.1992).

A motion for summary judgment under Federal Rule of Civil Procedure 56 requires the Court to determine whether the moving party is entitled to judgment as a matter of law based on the evidence thus far presented. Fed. R. Civ. P. 56(c). Summary judgment is proper “if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law.” Kee v. City of Rowlett, 247 F.3d 206, 210 (5th Cir.2001) (quotations omitted). A genuine issue of material fact exists if a reasonable jury could enter a verdict for the non-moving party. Crawford v. Formosa Plastics Corp., 234 F.3d 899, 902 (5th Cir.2000). The Court views all evidence in the light most favorable to the non-moving party and draws all reasonable inferences in that party’s favor. Id. Hearsay, conclusory allegations, unsubstantiated assertions, and unsupported speculation are not competent summary judgment evidence. F.R.C.P. 56(e)(1); See, e.g., Eason v. Thaler, 73 F.3d 1322, 1325 (5th Cir.1996), McIntosh v. Partridge, 540 F.3d 315, 322 (5th Cir.2008); see also Little v. Liquid Air Corp., 37 F.3d 1069, 1075 (5th Cir.1994) (noting that a non-movant’s burden is “not satisfied with ‘some metaphysical doubt as to the material facts.’” (citing Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986))).

A. Laches

Laches is an equitable defense to patent infringement that bars a patentee’s claim for damages prior to suit. 35 U.S.C. § 282. To bring a successful laches defense, a defendant must prove two factors: (1) the plaintiff delayed filing suit for an unreasonable and inexcusable length of time from the time the plaintiff knew or reasonably should have known of its claim against the defendant; and (2) the delay operated to the prejudice or injury of the defendant. Intirtool, Ltd. v. Texar Corp., 369 F.3d 1289, 1297 (Fed.Cir.2004). In determining whether a laches defense applies, a court must look at all the particular facts and circumstances of each case and weigh the equities of the parties. Bott v. Four Star Corp., 807 F.2d 1567, 1576 (Fed.Cir.1986).

The period of delay is measured beginning at the time the patentee has actual or constructive knowledge of the allegedly infringing activity. Adelberg Laboratories, Inc. v. Miles, Inc., 921 F.2d 1267, 1270 (Fed.Cir.1990); see also Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp., 587 F.3d 1339, 1350 (Fed.Cir.2009). The length of time which may be deemed unreasonable has no fixed boundaries but rather depends on the circumstances. Aukerman, 960 F.2d at 1032. In order to determine whether the delay is excusable, a court must consider and weigh any justification offered by the plaintiff for its delay. Id. at 1033. Recognized excuses have included other litigation, negotiations with the accused, poverty and illness, wartime conditions, the extent of infringement, and dispute over patent ownership. Id.

A defendant must show that it suffered material prejudice, either economic or evidentiary, as a result of the plaintiffs delay. Aukerman, 960 F.2d at 1033. “Economic prejudice may arise where a defendant and possibly others will suffer the loss of monetary investments or incur damages which likely would have been prevented by earlier suit.” Id. “Making heavy capital investment and increasing production can constitute prejudice.” Adelberg Laboratories, Inc., 921 F.2d at 1272; see also Technology for Energy Corp. v. Computational Systems, Inc., No. 92-1542, 92-1551, 1993 WL 366350, *7-8, 1993 U.S.App. LEXIS 24556, *21 (finding economic prejudice where defendant expanded its business, including employees, sales, and research and development); but see Ecolab, Inc. v. Envirochem, Inc., 264 F.3d 1358 (Fed.Cir.2001).

1. 2004 RFQ

Defendants argue that Shell knew or should have known of Defendants’ allegedly infringing activities in 2004 when Defendants disclosed the 1980 Design spent catalyst distributor as part of the RFQ sent by RMS to Shell. Shell does not dispute that it received the 2004 RFQ from RMS, that it communicated with RMS and Tesoro about the RFQ, and that it submitted a bid in response to the RFQ.

As an initial matter, we focus on Shell’s actual or constructive knowledge of the Modified Design rather than Shell’s actual or constructive knowledge of the 1980 Design. We so focus because Shell has sued for infringement based upon Defendants’ acts in relation to the Modified Design, not the 1980 Design. Shell’s knowledge of the 1980 Design is relevant only insofar as it may have put Shell on actual or constructive notice of the Modified Design.

Further, we construe the “allegedly infringing activities” to include not only the installation of the Modified Design spent catalyst distributor in April 2007 and its continued use, but also RMS’s provision of engineering designs, drawings and specifications to Tesoro for the modifications to be made to the spent catalyst distributor. Our interpretation is in line with Shell’s complaint, which alleges that both Tesoro’s installation and use of the Modified Design spent catalyst distributor and RMS’s provision of designs and drawings constitute direct infringement. Shell’s complaint also alleges that RMS’s provision of designs and drawings, and its assistance in fabricating the spent catalyst distributor, constitutes inducement of infringement. Shell changes course in its response brief and argues that “allegedly infringing activities” cannot have occurred prior to April 2007, when the Modified Design spent catalyst distributor was installed, because any activities that occurred prior to April 2007 do not constitute an act of infringement under 35 U.S.C. § 271. This assertion is belied not only by Shell’s complaint, which details many allegedly infringing activities that occurred prior to installation, but also the text of 35 U.S.C. § 271 that imposes liability for many acts other than simply using an infringing item.

With this in mind, we turn to the issue of whether the 2004 RFQ provided Shell with actual or constructive knowledge of Defendants’ allegedly infringing activities or the Modified Design. It is clear that the 2004 RFQ sent by RMS to Shell did not provide Shell with actual knowledge of the Modified Design. The 2004 RFQ contained only a drawing depicting the 1980 Design and did not contain any drawing or description of the Modified Design. Neither did the 2004 RFQ provide Shell with actual knowledge of Defendants’ allegedly infringing activities. The RFQ did not list the spent catalyst distributor as an item for which Tesoro sought bids. The RFQ omitted discussion of Tesoro’s planned modification of the spent catalyst distributor or installation of a new one. Finally, all of the communication between Shell and Defendants about the RFQ, including communication about potential patent infringement, focused on the standpipe and well hopper. These communications did not provide Shell with actual notice that Defendants’ planned to modify the spent catalyst distributor, let alone use the Modified Design.

We next examine whether the 2004 RFQ provided Shell with constructive knowledge of the Modified Design or Defendants’ allegedly infringing activities. “The law is well settled that where the question of laches is in issue the plaintiff is chargeable with such knowledge as he might have obtained upon inquiry, provided the facts already known by him were such as to put upon a man of ordinary intelligence the duty of inquiry.” Wanlass v. General Electric Co., 148 F.3d 1334, 1338 (Fed.Cir.1998) (quoting Johnston v. Standard Mining Co., 148 U.S. 360, 13 S.Ct. 585, 37 L.Ed. 480 (1893)). A defendant’s “pervasive, open, and notorious activities” may impart to the patentee a duty to inquire. Hall v. Aqua Queen Mfg., Inc., 93 F.3d 1548, 1553 (Fed.Cir.1996). Such activities may include not only sales, marketing, public use, or published descriptions of potentially infringing activity that are directly known to the patentee, but also activities that are sufficient prevalent in the inventor’s field of endeavor. Wanlass, 148 F.3d at 1338.

We do not find that the 2004 RFQ provided sufficient facts to put upon Shell a duty of inquire as to Defendants’ infringing activities or the Modified Design. The 2004 RFQ set forth a specific list of items for which Defendants sought bids from licensors. This list did not include the spent catalyst distributor. The 2004 RFQ did not describe the 2007 revamp as project in which Tesoro would modify all parts of the regenerator. In addition, the communications between Shell and Defendants about the RFQ did not reference Defendants’ planned modification to the spent catalyst distributor, their intended use of the Modified Design, or any other potentially infringing activity. Based on the summary judgment record as it currently stands, we cannot conclude that Defendants were pervasive, open, or notorious about their plans, infringing or not, with respect to the spent catalyst distributor. As such, Shell did not have a duty to inquire as to Defendants’ activities in order to determine whether they were infringing.

We conclude that the period of delay cannot begin in 2004 because Shell did not have actual or constructive knowledge at that time of Defendants’ allegedly infringing activities.

2. October 2005 Disclosures

Defendants also argue that Shell knew or should have known of Defendants’ allegedly infringing activities in October 2005, when Sadeghbeigi emailed Brosten a copy of the Modified Design spent catalyst distributor. Shell does not dispute the October 2005 communications between Sadeghbeigi and Brosten. However, Shell has submitted an affidavit from Brosten stating that he did not know of the 318 Patent at the time of the October 2005 communications. In addition, Brosten’s affidavit states that Sadeghbeigi asked Brosten not to share the Modified Design with other Shell employees. Brosten did not do so. Defendants have not controverted Brosten’s statements. Therefore, we accept the statements in Brosten’s affidavit regarding the October 2005 communications as undisputed facts.

Reviewing the undisputed facts proffered by Defendants and Shell, we find that Brosten possessed both actual and constructive knowledge of Defendants’ allegedly infringing activities as of October 27, 2005. On that date, Sadeghbeigi emailed Brosten a copy of an engineering drawing depicting the Modified Design spent catalyst distributor. The drawing clearly states that it had been prepared by RMS for Tesoro’s SLC Refinery. Provision of this drawing to Brosten provided Brosten with actual knowledge of RMS’s delivery to Tesoro of engineering designs, drawings and specifications for the Modified Design spent catalyst distributor. All of these activities have been alleged by Shell in its complaint to constitute direct infringement and inducement of infringement. In addition, the drawing provided Brosten with constructive knowledge of the other allegedly infringing activity performed by Defendants — i.e., RMS’s provision of assistance and advice to Tesoro in its contracting, hiring and supervision of vendors for the fabrication and installation of the Modified Design spent catalyst distributor, Tesoro’s installation of the Modified Design in the SLC Refinery — that Shell alleges in its complaint are acts of infringement. An engineering drawing such as the one provided to Brosten would suggest that a company planned to use such a design. At that point, a person would have a duty to inquire as to the extent of the potential infringer’s commercialization of the design. In doing so, the person would learn of the manufacture of the item and its planned use, all of which are allegedly infringing activities. Thus, we find that Brosten was provided with sufficient information via the engineering drawing of the Modified Design that he should have inquired as to the exact nature of Defendants’ activities.

Shell argues that Brosten never disclosed his knowledge of the Modified Design to other Shell employees. Shell contends that its first knowledge that Defendants had installed the infringing Modified Design spent catalyst distributor came in 2008, when Sadeghbeigi presented at the NPRA conference. It appears that Shell is arguing that Brosten’s individual knowledge cannot be imputed to Shell as a corporation, though Shell does not explicitly say so.

The Federal Circuit has used general agency law in determining whether to impute the knowledge of an employee to the corporation. See Long Island Savings Bank, FSB v. United States, 503 F.3d 1234, 1249 (Fed.Cir.2007); Manville Sales Corp. v. Paramount Systems, Inc., 917 F.2d 544, 553 (Fed.Cir.1990). The Restatement (Third) of Agency outlines the circumstances in which an agent’s notice of a fact is imputed to the principal:

For purposes of determining a principal’s legal relationship with a third party, notice of a fact that an agent knows or has reason to known is imputed to the principal if knowledge of the fact is material to the agent’s duties to the principal, unless the agent

(a) acts adversely to the principal as state in § 5.04, or

(b) is subject to a duty to another not to disclose the fact to the principal.

Restatement (Third) of Agency § 5.03 (2005). An agent has notice of a fact if the agent “knows the fact, has reason to know the fact, ... or should known the fact to fulfill a duty owed to another person.” Id. § 5.01(3). “A principal may not rebut the imputation of an agent’s notice of a fact by establishing that the agent kept silent.” Id. § 5.03 cmt. b. Notice of a fact will not be imputed to the principal when the “agent acts adversely to the principal in a transaction or matter, intending to act solely for the agent’s own purposes or those of another person.” Id. § 5.04. In the patent context, at least one district court has held that it is unnecessary for an employee with knowledge of infringing activities to have knowledge of the patent before imputing knowledge of the infringing activity to the corporation. Tenneco Automotive Operating Co. v. Visteon Corp., 375 F.Supp.2d 375, 382 n. 5 (D.Del.2005). “To hold otherwise would allow patentees to preclude laches defenses merely by not informing employees of patents.” Id.

Defendants have established that Bros-ten was on notice of Defendants’ allegedly infringing activities, both in terms of actual knowledge and constructive knowledge. However, Defendants have not established by preponderance of the evidence that knowledge of Defendants’ use of the Modified Design was material to Brosten’s duties to Shell such that Brosten’s knowledge should be imputed to Shell. We do not think it dispositive that Brosten did not know of the 318 Patent in October 2005. Rather, the question of imputation turns on whether Brosten’s duties to Shell would have made knowledge of the Modified Design significant. Some courts have found that knowledge possessed by certain individuals, by virtue of their position within the organization, is imputed to the organization. See Manville Sales Corp., 917 F.2d at 553 (holding that knowledge or belief held by corporation’s officers as imputable to corporation); Olympia Werke Aktiengesellschaft v. General Electric Co., 545 F.Supp. 598, 613 (W.D.Va.1982), aff'd by, 712 F.2d 74 (4th Cir.1983) (notice to plaintiffs high level management officials constitutes notice to plaintiff).

Here, it is unclear whether Brosten occupied such a position. Brosten appears to have specialized in the area of FCC Units, both at Shell and at Tesoro. In addition, he was aware of some of Shell’s patents, as evidenced by his notifying Chen that the standpipe and well hopper in RMS’s initial 2004 RFQ may infringe upon Shell’s patents. Brosten may have possessed a duty to familiarize himself with Shell’s patents, keep abreast of new developments in spent catalyst distributors, and evaluate new FCC Unit technology and designs with an eye to their potential infringement upon Shell’s patents. At this stage, however, the summary judgment evidence does not establish that Brosten possessed such a duty. Moreover, there is some evidence that Brosten may have acted adversely to Shell when he provided advice to Sadeghbeigi. In addition, Sadeghbeigi’s request that Brosten not disclose the Modified Design to other Shell employees may have imposed upon Brosten a duty not to disclose the design. However, the scope of Brosten’s duty to Shell, once established, may suggest that Brosten should not have accepted such a condition on his candor. We cannot conclude, at this stage of the proceedings, that Brosten’s actual and constructive knowledge should be imputed to Shell. As a result, we cannot conclude that Shell knew or had reason to know of Defendants’ allegedly infringing activities in October 2005.

Since Defendants have not met their burden in establishing that the laches period began in October 2005, we do not need to address whether Shell’s failure to file suit until 2009 was unreasonable or inexcusable. Without knowing the appropriate period of delay, we cannot analyze whether the delay resulted in material prejudice to Defendants. At this stage of the proceedings, we deny summary judgment to Defendants on the defense of laches.

B. Equitable Estoppel

To succeed on a defense of equitable estoppel, a defendant must establish: (1) the patentee, through misleading conduct, leads the alleged infringer to reasonably infer that the patentee does not intend to enforce its patent against the alleged infringer; (2) the alleged infringer relies on that conduct; and (3) due to its reliance, the allegedly infringer will be materially prejudiced if the patentee is allowed to proceed with its claim. Aukerman, 960 F.2d at 1028.

In order to establish that the patentee’s conduct was misleading, the alleged infringer must show that the conduct supported an inference that the patentee did not intend to press an infringement claim against the alleged infringer. Aukerman, 960 F.2d at 1042. Therefore, the alleged infringer must be aware of the patentee and/or its patent. Id. In addition, the alleged infringer must know or reasonably be able to infer that the patentee has known of its activities for some time. Id. “Conduct” may include specific statements, action, inaction, or silence where there was an obligation to speak. Aspex Eyewear, Inc. v. Clariti Eyewear, Inc., 605 F.3d 1305, 1310 (Fed.Cir.2010). “Silence alone will not create an estoppel unless there is a clear duty to speak or somehow the patentee’s continued silence reenforces the defendant’s inference from the plaintiffs known acquiescence that the defendant will be unmolested.” Aukerman, 960 F.2d at 1043-1044. “Plaintiffs inaction must be combined with other facts respecting the relationship or contacts between the parties to give rise to the necessary inference that the claim against defendant is abandoned.” Id. at 1042.

A defendant must show that it “substantially relied” on the misleading conduct of the patentee in connection with taking some action. Aukerman, 960 F.2d at 1042-43. There is no reliance when a defendant continues infringing because of a belief of non-infringement rather than a misrepresentation by the patentee. See, e.g., Vaupel Textilmaschinen KG v. Meccanica Euro Italia SPA, 944 F.2d 870, 879 (Fed.Cir.1991).

A defendant may show prejudice through a change in its economic position. Aspex Eyewear, Inc., 605 F.3d at 1313.

1. Misleading Silence

Defendants argue that Shell’s silence after being made aware of the 1980 Design in 2004, and of the Modified Design in October 2005 and April 2007, was misleading.

A patentee’s silence can be misleading as long as there is a clear duty to speak, or is combined with other facts regarding the relationship between the parties that would lead the accused infringer to believe that the patentee’s claim was abandoned. Aukerman, 960 F.2d at 1042, 1043-44. “Silence alone is not sufficient affirmative conduct to give rise to estoppel.” Meyers v. Asics Corp., 974 F.2d 1304, 1308 (Fed.Cir.1992) (quoting Hottel Corp. v. Seaman Corp., 833 F.2d 1570, 1573 (Fed.Cir.1987)).

Shell’s silence after receiving the 2004 RFQ containing the 1980 Design spent catalyst distributor was not misleading. First, as Shell has not sued for infringement based on the 1980 Design, we cannot say that Shell possessed a duty to raise a claim for infringement upon receiving the 1980 Design. Neither did Shell possess a duty to interpose its concerns about future modifications to the spent catalyst distributor because the 2004 RFQ did not indicate that Defendants were considering modifications to the distributor.

Second, Shell’s communications with Defendants about potential patent infringement focused on the standpipe and well hopper technology. Shell did not raise any patent claims with respect to the 1980 Design spent catalyst distributor. We agree with Defendants that the communication does not have to be an “immediate threat of enforcement.” See Aspex Eyewear, Inc., 605 F.3d at 1311; ABB Robotics, Inc., 52 F.3d at 1064. However, in cases where estoppel has been found, the parties have had at least some type of communication about the patent-at-issue. See, e.g., Aspex Eyewear, Inc. v. Clariti Eyewear, Inc., 605 F.3d 1305 (Fed.Cir.2010); ABB Robotics, Inc. v. GMFanuc Robotics Corp., 52 F.3d 1062 (Fed.Cir.1995); Adelberg Laboratories, Inc., 921 F.2d at 1268-69. Since Shell did not raise any claims related to the 318 Patent, its silence could not have induced Defendants to believe that Shell abandoned its claim with respect to the 318 Patent. Adelberg Laboratories, Inc., 921 F.2d at 1274. We find that the relationship between the parties in 2004 does not give rise to the necessary inference that Shell had abandoned its 319 Patent claim against Defendants.

The 2004 RFQ is relevant in providing context to the October 2005 and April 2007 communications between Sadeghbeigi and Brosten. By this point, it may have been reasonable for Defendants to expect Shell to raise any patent-related concerns regarding modifications to the FCC Unit, based upon Shell’s previous reaction to the 2004 RFQ. Shell’s failure to do so may have lulled Defendants into a sense of security that Shell did not intend to enforce any patent claims with respect to the Modified Design spent catalyst distributor. Although Defendants have a colorable argument that Shell’s silence after October 2005 was misleading, we cannot conclude that, at this stage of the proceedings, they are entitled to summary judgment as a matter of law. First, Shell contends that Brosten did not share the Modified Design with his Shell colleagues. Brosten himself did not know about the 318 Patent. As described in the previous section, we cannot conclude that Brosten’s knowledge of the Modified Design should be imputed to Shell. Unless it possessed knowledge of the Modified Design, Shell did not have a duty to raise its patent claims. Second, Sadeghbeigi told Brosten not to share the Modified Design with other colleagues at Shell. We do not know why Sadeghbeigi made this request. When Brosten subsequently remained silent about the Modified Design’s potential infringement upon the 318 Patent, one inference is that Shell did not intend to pursue any patent claims based on the Modified Design. Another inference is that Shell did not raise patent concerns because Sadeghbeigi ensured that Shell’s senior management did not find out about the Modified Design. In the latter case, Defendants could not have been misled by Shell’s silence because they knew Shell was not fully aware of the Modified Design. In order to obtain summary judgment, the inference that Shell’s silence meant that Defendants could continue their use of the Modified Design unmolested must be the “only possible inference from the evidence.” Aukerman, 960 F.2d at 1044. We cannot conclude that this is the only possible inference. We find that Defendants have not met their burden of proof in establishing that Shell’s silence after disclosures in October 2005 and April 2007 was misleading. Since “misleading conduct” is an essential element of the defense of equitable estoppel, we must deny summary judgment to Defendants. We need not decide whether Defendants have established reliance or material prejudice.

II. MOTION TO EXCLUDE EXPERT TESTIMONY OF YE-MON CHEN

Prior to the Markman hearing held on December 1, 2010, Defendants moved to exclude the expert testimony of Ye-Mon Chen if proffered by Shell during the hearing. Shell did not proffer the expert testimony of Ye-Mon Chen during the Mark-man hearing. The Court has not relied on Mr. Chen’s expert opinion in construing the asserted claims of the 318 Patent. Therefore the Court denies the motion to exclude Ye-Mon Chen’s testimony as moot.

III. LEGAL STANDARD — MARKMAN HEARINGS GENERALLY

A. Claim Construction

Claim construction is a matter of law, and thus the task of determining the proper construction of all disputed claim terms lies with the Court. Markman v. Westview Instruments, Inc., 517 U.S. 370, 372, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). The Federal Circuit has opined extensively on the proper approach to claim construction, most notably in its recent opinion in Phillips v. AWH Corp., 415 F.3d 1303 (Fed.Cir.2005) (en banc).

The goal of a Markman hearing is to arrive at the ordinary and customary meaning of a claim term in the eyes of a person of ordinary skill in the art. Phillips, 415 F.3d at 1313. In order to do so, the Court should first look to intrinsic evidence to decide if it clearly and unambiguously defines the disputed terms of the claim. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1585 (Fed.Cir.1996). The intrinsic evidence includes the claims themselves, the specification, and the prosecution history. Phillips, 415 F.3d at 1314.

1. Claim Language

Words of a claim are generally given their ordinary and customary meaning, which is the meaning a term would have to a person of ordinary skill in the art after reviewing the intrinsic record at the time of the invention. O2 Micro Int’l Ltd. v. Beyond Innovation Technology Co., 521 F.3d 1351, 1360 (Fed.Cir.2008). Thus, the inquiry into how a person of ordinary skill in the art understands a claim term provides an objective baseline from which to begin claim interpretation. Phillips, 415 F.3d at 1313. That starting point is based on “the well-settled understanding that inventors are typically persons skilled in the field of the invention, and that patents are addressed to, and intended to be read by, others of skill in the pertinent art.” Id. A district court is not obligated to construe terms with ordinary meanings, lest trial courts be inundated with requests to parse the meaning of every word in the asserted claims. O2 Micro Intern. Ltd., 521 F.3d at 1360; see also Biotec Biologische Naturverpackungen GmbH & Co. KG v. Biocorp, Inc., 249 F.3d 1341, 1349 (Fed.Cir.2001) (finding no error in non-construction of “melting”); Mentor H/S, Inc. v. Med. Device Alliance, Inc., 244 F.3d 1365, 1380 (Fed.Cir.2001) (finding no error in the lower court’s refusal to construe “irrigating” and “frictional heat”).

The claims themselves provide substantial guidance as to the meaning of particular claim terms. Phillips, 415 F.3d at 1314. To begin with, the context in which a term is used in the asserted claim can be highly instructive. Id. Other claims of the patent in question, both asserted and unasserted, can also be valuable sources of enlightenment as to the meaning of a claim term. Vitronics, 90 F.3d at 1582. Because claim terms are normally used consistently throughout the patent, the usage of a term in one claim can often illuminate the meaning of the same term in other claims. Phillips, 415 F.3d at 1314. “[D]ifferent words or phrases used in separate claims are presumed to indicate that the claims have different meanings and scope.” Seachange Int’l, Inc. v. C-COR, Inc., 413 F.3d 1361, 1368 (Fed.Cir.2005). Furthermore, the presence of a dependent claim that adds a particular limitation gives rise to a presumption that that limitation in question is not present in the independent claim. Phillips, 415 F.3d at 1314 (citing Liebek-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed.Cir. 2004)).

2. Specification

In addition, the specification, or the part of the patent where the inventor describes and illustrates the invention in significant detail, “is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.” Vitronics, 90 F.3d at 1582. The importance of the specification in claim construction derives from its statutory role. The relationship between the written description and the claims is enforced by the statutory requirement that the specification describe the claimed invention in “full, clear, concise, and exact terms.” 35 U.S.C. § 112, ¶ 1. Consistent with that general principle, cases recognize that the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess. In such cases, the inventor’s lexicography governs. Phillips, 415 F.3d at 1316. In other cases, the specification may reveal an intentional disclaimer, or disavowal, of claim scope by the inventor. In that instance as well, the inventor has dictated the correct claim scope, and the inventor’s intention, as expressed in the specification, is regarded as dispositive. Id. The specification may also resolve ambiguous claim terms that are not sufficiently clear to permit the scope of the claim to be ascertained from the words alone. Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed.Cir.2002). Clear statements of scope in the specification are determinative of the correct claim construction. Id. at 1327.

Notably, while the specification may describe very specific embodiments of the invention, the claims are not to be confined to these embodiments. Ventana Medical Systems, Inc. v. Biogenex Laboratories, Inc., 473 F.3d 1173, 1181 (Fed.Cir.2006) (quoting Phillips, 415 F.3d at 1323); see also DSW, Inc. v. Shoe Pavilion, Inc., 537 F.3d 1342, 1348 (Fed.Cir.2008) (“Moreover, when claim language is broader than the preferred embodiment, it is well settled that claims are not to be confined to that embodiment.”); Innova/Pure Water Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1117 (Fed.Cir.2004) (stating that “[plarticular embodiments appearing in the written description will not be used to limit claim language that has a broader effect”); Teleflex, 299 F.3d at 1327 (noting that claim terms take on their ordinary and customary meaning, regardless of number of embodiments disclosed in the specification, unless intrinsic record reflects “expression of manifest exclusion or restriction, representing a clear disavowal of claim scope”).

However, the Federal Circuit has also held there to be certain instances where limiting language contained within a specification can lead to a restrictive construction. For example, in Lizardtech, Inc. v. Earth Resource Mapping, Inc., 433 F.3d 1373, 1375 (Fed.Cir.2006), the court stated:

However, in whatever form the claims are finally issued, they must be interpreted, in light of the written description, but not beyond it, because otherwise they would be interpreted to cover inventions or aspects of an invention that have not been disclosed. Claims are not necessarily limited to preferred embodiments, but, if there are no other embodiments, and no other disclosure, then they may be so limited. One does not receive entitlement to a period of exclusivity for what one has not disclosed to the public.

See also Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1367 (Fed.Cir.2007) (upholding district court’s limiting construction of a claim term based on specification language that indicated that the limitation was not a preferred embodiment, but rather “a critical element in the process”); Honeywell Int’l, Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1318 (Fed.Cir.2006) (holding that the meaning of a claim was limited to the single embodiment disclosed in the specification, and specifically noting that this sole embodiment was consistently referred to as “this invention” or “the present invention”). In Honeywell, the Federal Circuit found that the use of “present invention language” within the specification was significant in deciding whether claim terms could be limited by certain disclosed embodiments because “[t]he public is entitled to take the patentee at his word .... ” Honeywell, 452 F.3d at 1316-18. Relatedly, in Toro Co. v. White Consol. Industries, Inc., the Federal Circuit relied on the specification description and construed the term “including” so as to limit a patent claim, noting that “not other broader concept was described as embodying the applicant’s invention, or shown in any of the drawings, or presented for examination.” 199 F.3d 1295, 1301 (Fed.Cir.1999).

Whether an invention is fairly claimed more broadly than the preferred embodiment in the specification is a question specific to the content of the specification. Teleflex, 299 F.3d at 1327. The distinction between using the specification to interpret the meaning of a claim and importing limitations from the specification into the claim is a difficult tightrope that district courts must walk. Andersen Corp., 474 F.3d at 1373; see also Innova/Pure Water Inc., 381 F.3d at 1117 (noting the longstanding difficulty in reconcil ing the axioms that a claim must be read in light of the specification and that a court may not read a limitation into a claim from a specification) (citing cases); Comark Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed.Cir.1998) (noting that there is “a fine line between reading a claim in light of the specification, and reading a limitation into the claim from the specification”).

3. Prosecution History

Finally, the prosecution history, which has been designated as part of the “intrinsic evidence,” consists of the complete record of the proceedings before the PTO and includes the prior art cited during the examination of the patent. Like the specification, the prosecution history provides evidence of how the PTO and the inventor understood the patent. Phillips, 415 F.3d at 1317. Yet, because the prosecution history represents an ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the specification and thus is less useful for claim construction purposes. Id.

Still, “a patentee may limit the meaning of a claim term by making a clear and unmistakable disavowal of scope during prosecution.” Purdue Pharma L.P. v. Endo Pharms., Inc., 438 F.3d 1123, 1136 (Fed.Cir.2006); see also Omega Engineering Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed.Cir.2003) (finding that the doctrine of prosecution disclaimer is well established and precludes patentees from recapturing through claim construction specific meanings disclaimed during prosecution). A patentee could do so, for example, by clearly characterizing the invention in a way to try to overcome rejections based on prior art. See, e.g., Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1349 (Fed.Cir.2004) (limiting the term “transmitting” to require direct transmission over telephone line because the patentee stated during prosecution that the invention transmits over a standard telephone line, thus disclaiming transmission over a packet-switched network); Alloc v. Int'l Trade Comm’n, 342 F.3d 1361, 1372 (Fed.Cir.2003) (finding the patentee expressly disavowed floor panel ing systems without “play” because the applicant cited the feature during prosecution to overcome prior art); Bell Atl. Network Servs. v. Covad Commc’ns Group, Inc., 262 F.3d 1258, 1273 (Fed.Cir.2001) (limiting operation of the “transceiver” to the three stated modes because of clearly limiting statements made by the patentee to try to overcome a prior art rejection).

4. Extrinsic Evidence

Only if there is still some genuine ambiguity in the claims, after consideration of all available intrinsic evidence, should a trial court resort to extrinsic evidence, such as expert witness testimony, dictionary definitions, and legal treatises. While extrinsic evidence “can shed useful light on the relevant art,” it is “less significant than the intrinsic record in determining ‘the legally operative meaning of claim language.’ ” C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed.Cir.2004) (quoting Vanderlande Indus. Nederland EV v. Int’l Trade Comm’n, 366 F.3d 1311, 1318 (Fed.Cir.2004)). The judicial arbiter must be sufficiently informed so that she may step into the shoes of the ordinary skilled artisan. It is here that the use of extrinsic evidence makes the most sense.

B. Indefiniteness

A claim is invalid under 35 U.S.C. § 112, ¶ 2 if it fails to “particularly point out and distinctly claim the subject matter that the applicant regards as the invention.” A party seeking to invalidate a claim as indefinite must show by clear and convincing evidence that one skilled in the art would not understand the scope of the claim when read in light of the specification. Mass Engineered Design, Inc. v. Ergotron, Inc., 559 F.Supp.2d 740, 759 (E.D.Tex.2008) (citing Intellectual Property Dev. Inc. v. UA-Columbia Cablevision of Westchester, Inc., 336 F.3d 1308, 1319 (Fed.Cir.2003)). Close questions of indefiniteness in patent litigation are properly resolved in favor of the patentee, that is, the owner of the patent in question. Bancorp Services LLC v. Hartford Life Ins. Co., 359 F.3d 1367, 1371 (Fed.Cir.2004).

C. Means-Plus-Function Claims

35 U.S.C. Section 112, ¶ 6 provides:

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 (emphasis added).

Means-plus-function claims contain only purely functional limitations but do not provide the structures that perform the recited function. See Phillips, 415 F.3d at 1311; Envirco Corp. v. Clestra Cleanroom, Inc., 209 F.3d 1360, 1365 (Fed. Cir.2000). Section 112, ¶ 6 allows a patentee to “describe an element of his invention by the result accomplished or the function served, rather than describing the item or element to be used.” Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 27, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997). The claim is then interpreted with reference to, and as limited by, the related structure disclosed in the patent for performing the function recited in the claim, or the equivalents thereof. Welker Bearing Co. v. PHD, Inc., 550 F.3d 1090, 1099 (Fed.Cir.2008); Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc., 145 F.3d 1303, 1308 (Fed.Cir.1998).

The court must determine, as a matter of law, whether a phrase should be construed as a means-plus-function term. Welker Bearing, 550 F.3d at 1096. If the word “means” is used in a claim element, in combination with a function, the court must presume that Section 112, ¶ 6 applies unless the claim recited a sufficient structure to perform the function. Id.; TriMed, 514 F.3d at 1259; Micro Chem., Inc. v. Great Plains Chem. Co., 194 F.3d 1250, 1257 (Fed.Cir.1999). If the word “means” is not used, the presumption is that a claim falls outside of Section 112, ¶ 6. Micro Chem., 194 F.3d at 1257. This presumption is rebutted by showing that the claim element recites a function without reciting sufficient structure for performing that function. Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed.Cir.2000). “Sufficient structure exists when the claim language specifies the exact structure that performs the functions in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure.” TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259-60 (Fed.Cir.2008). If means-plus-function analysis applies, a court must first determine what the claimed function is and then determine the corresponding structures disclosed in the specification that perform that function. Welker Bearing, 550 F.3d at 1097; Minks v. Polaris Indus., Inc., 546 F.3d 1364, 1377 (Fed.Cir.2008).

IV. ANALYSIS — MARKMAN CLAIM: CONSTRUCTION

The Court will now apply these general principles of claim construction to the terms at issue here. The asserted claims 1-4 are:

1.An apparatus for radial distribution of fluid into a fluid mass contained in a vessel comprising (a) a vessel containing a fluid mass; (b) disposed within said vessel and within said fluid mass, a centrally disposed fluid riser inlet conduit extending through a wall or floor of said vessel and oriented substantially vertically along the fluid riser inlet conduit’s longitudinal axis, said riser inlet conduit having a plurality of fluid conveying arms each of said arms having an end remote from said fluid riser inlet conduit, and each of said arms extending radially and substantially horizontally outward from the vertical axis of said fluid riser inlet conduit and extending radially into the fluid mass wherein the arms have an enclosed length and (c) having along said enclosed length one or more outlet openings at or near the end remote from the fluid riser inlet conduit.

2. The apparatus according to claim 1 wherein said fluid conveying arms have a length of at least one quarter of the radius of the fluid mass.

3. The apparatus according to claim 1 further comprising means for dissipating kinetic energy of the fluid as the fluid is discharged at each outlet opening.

4. The apparatus according to claim 3 wherein said kinetic energy dissipating means comprises impact or expansion means.

(col. 7 1. 7 to col. 81. 6.)

A. “FLUID”-RELATED TERMS

l.“fluid mass