UNITED STATES DISTRICT COURT FOR THE 

DISTRICT OF NEW HAMPSHIRE

Hypertherm, Inc.

v. Civil No. 05-cv-373-JD

Opinion No. 2008 DNH 020

American Torch Tip Company

O R D E R

Hypertherm, Inc. has filed an action for patent infringement

against American Torch Tip Company ("ATTC"). The patents at

issue in this suit pertain to plasma arc torches that are used

for cutting metal. Hypertherm and ATTC seek claim construction

for terms used in four patents, U.S. Patent No. 7,019,255 ("the

'255 patent"), U.S. Patent No. 6,946,617 ("the '617 patent"),

U.S. Patent No. 5,977,510 ("the '510 patent"), and U.S. Patent

No. 5,310,988 ("the '988 patent"). The parties filed briefs and

responses in support of their claim constructions, and a Markman

hearing was held. 

Standard of Review

"It is a bedrock principle of patent law that the claims of

a patent define the invention to which the patentee is entitled

the right to exclude." Phillips v. AWH Corp., 415 F.3d 1303,

1312 (Fed. Cir. 2005) (internal quotation marks omitted). 

Case 1:05-cv-00373-JD Document 152 Filed 01/29/08 Page 1 of 25
2

Construing a term in a patent claim is an issue of law. z4

Techs., Inc. v. Microsoft Corp., 507 F.3d 1340, 1347 (Fed. Cir.

2007). "Words of a claim are generally given their ordinary and

customary meaning as understood by a person of ordinary skill in

the art in question." Stumbo v. Eastman Outdoors, Inc., --- F.3d

---, 2007 WL 4180137 at *2 (Fed. Cir. Nov. 28, 2007). 

In construing patent claims, the court looks "first at

intrinsic evidence such as surrounding claim language, the

specification, the prosecution history, and also at extrinsic

evidence, which may include expert testimony and dictionaries." 

L.B. Plastics, Inc. v. Amerimax Home Prods., Inc., 499 F.3d 1303,

1308 (Fed. Cir. 2007). Extrinsic evidence, however, is less

reliable than intrinsic evidence which includes the claims, the

specification, and the prosecution history. Phillips, 415 F.3d

at 1319-21. "Patent scope should be coextensive with what the

inventor invented as evidenced by what is disclosed in the patent

specification." Acumed LLC v. Stryker Corp., 483 F.3d 800, 815

(Fed. Cir. 2007).

Case 1:05-cv-00373-JD Document 152 Filed 01/29/08 Page 2 of 25
3

Discussion

Hypertherm contends that the disputed claims have their

ordinary and customary meanings. ATTC contends that the

prosecution histories affect the scope of some claims and that

additional limitations should be construed from the

specifications into the disputed claims. Hypertherm opposes the

limitations that ATTC proposes. The disputed claims are

construed as follows.

I. Disputed Claims in the '255 and '617 Patents

The '255 patent issued from a continuation of the

application that became the '617 patent. As a result, the '255

and '617 patents are related and share the same specification and

drawings. Because the disputed claims are materially similar,

the claims are construed together.

The '255 and '617 patents are directed to "a method and

apparatus for alignment of components of a plasma arc torch." 

The apparatus addressed in the patents are electrodes, coolant

tubes, and their combination in a torch. The disputed claims are

claims 7 and 25 in the '255 patent and claim 12 in the '617

patent, which are similar and are directed to an electrode. The

phrase that gives rise to the parties' dispute, "wherein the

coolant tube is not rigidly attachable to a torch body," is used

Case 1:05-cv-00373-JD Document 152 Filed 01/29/08 Page 3 of 25
4

in all three claims. Claim 12 in the '617 patent states:

An electrode for a plasma arc torch, the electrode

comprising:

a hollow elongated body having an open end and a closed

end; and

a surface located on an interior portion of the

elongated body adapted to mate and align with a coolant

tube along a direction of a longitudinal axis of the

coolant tube, wherein the coolant tube is not rigidly

attachable to a torch body and an opening in the second

end of the coolant tube does not contact an inner

surface of the electrode.

Claim 7 of the '255 patent states:

An electrode for a plasma arc torch, the electrode

comprising:

a hollow elongated body having an open end and a closed

end; and

a surface located on an interior portion of the

elongated body adapted to mate and align with a coolant

tube along a direction of a longitudinal axis of the

coolant tube, wherein the coolant tube is not rigidly

attachable to a torch body.

Claim 25 of the '255 states:

An electrode for a plasma arc torch, the electrode 

comprising:

a hollow elongated body having an open end and a closed

end; and

a surface located on an interior portion of the

elongated body in a region between the open end and the

closed end, the surface adapted to mate and align with

a coolant tube along a direction of a longitudinal axis

of the coolant tube, wherein the coolant tube is not

rigidly attachable to a torch body.

Case 1:05-cv-00373-JD Document 152 Filed 01/29/08 Page 4 of 25
5

ATTC contends, based on the prosecution history of the '617

and '255 patents, that the disputed phrase was added to

distinguish the electrode claim from prior art and that the

phrase makes each disputed claim a combination claim for both the

electrode and the coolant tube. Hypertherm agrees that the

disputed phrase was added to the claims during the prosecution of

the patents to distinguish the claimed invention from prior art. 

Hypertherm argues, however, that the phrase describes the

environment in which the electrode operates, which is a

limitation on the invention, but does not add a claim for the

coolant tube along with the electrode.

A. Environment

Hypertherm's environment theory has not been addressed by

the Federal Circuit. Hypertherm relies on Williams Mfg. Corp. v.

United Shoe Mach. Co., 316 U.S. 364, 369 (1942), and two district

court cases, Canon Inc. v. GCC Int'l Ltd., 450 F. Supp. 2d 243,

250 (S.D.N.Y. 2006); Smith Corona Corp. v. Pelikan, Inc., 784 F.

Supp. 452, 461 (M.D. Tenn. 1992). In Williams, United Shoe had

accused Williams Manufacturing of infringing its patent for

improvements in a lasting machine for making the heels of shoes. 

Id. at 365-66. Williams sought and was granted certiorari on its

counterclaim that the patent claims in suit were invalid because

Case 1:05-cv-00373-JD Document 152 Filed 01/29/08 Page 5 of 25
6

they attempted to repatent a broad combination of old devices. 

Id. at 365. The Court concluded that the patent's reference to

other parts of the shoe machine did not incorporate the entire

machine into the claim but instead was necessary to describe the

new and novel combinations. Id. at 368. 

In Smith Corona, the jury found that the defendant, Pelikan,

infringed three of Smith Corona's patents for ink ribbon

cassettes. 784 F. Supp. at 459. Pelikan moved for JNOV, arguing

that the claims of the patents in suit were directed to a

combination of an ink ribbon cassette, correction cassette, and a

typewriter switch, not the ribbon cassette alone. Id. at 460. 

The court ruled that the asserted claims addressed the typewriter

ink ribbon cassettes which were "designed to function in the

described environment of compatible correction cassettes and

typewriter switches." Id. at 463. As such, the court

distinguished between a claim for a combination of components and

a claim for a single component that was limited by an intended

purpose or environment. Id. at 463-64. The court further found

that the prosecution history supported that view because Smith

Corona consistently represented that the asserted claims were

directed to a ribbon cassette with a structure to assure

compatibility with correction tape but did not claim a

Case 1:05-cv-00373-JD Document 152 Filed 01/29/08 Page 6 of 25
7

combination among the ink cassette, the correction tape, and the

switch. Id. at 465.

In Canon, 450 F. Supp. 2d at 246, the parties disputed the

scope of a claim for a toner cartridge that is used in a laser

printer or fax machine. The defendants argued that the claim

included a limitation that the cartridge would be used in a "main

assembly" with "a hole defined by the twisted surfaces." Id. at

249. Canon argued that the reference in the claim to the "main

assembly" and "a hole defined by the twisted surfaces" merely

described the environment in which the claimed cartridge was

intended to operate and was not an element of the claim. Id.

The court concluded that Canon could describe the structure

of the main assembly without incorporating that structure into

the claimed invention. Id. at 250; but see Canon, Inc. v. GCC

Int'l, Ltd., 2007 WL 4005018 at *3 (Fed. Cir. Nov. 16, 2007)

(stating that "[o]n the present record, there is a reasonably

debatable question of whether Claim 58 should be construed to

cover the cartridge alone or the cartridge as part of a

combination" but not reaching a final conclusion). The court

considered the prosecution history and found that it did not

clearly show that Canon had distinguished prior art from its

claimed invention based on the disputed term. Id.

Case 1:05-cv-00373-JD Document 152 Filed 01/29/08 Page 7 of 25
8

The environment theory appears to be less applicable here

where the disputed claims include a description of another part

of the invention, not merely other parts of a preexisting

mechanism. In addition, unlike the circumstances in Canon, here

the parties agree that Hypertherm added the disputed phrase about

the coolant tube to the electrode claims to distinguish those

claims from prior art. Therefore, to the extent a patentee may

describe the environment of an invention without claiming those

parts in combination with the invention, that theory does not fit

the circumstances of this case.

B. Specifications

The patents' specifications establish that the claimed

electrodes and coolant tubes are separate parts of a plasma arc

torch. The specifications explain that the electrode and coolant

tube must be precisely aligned with each other to allow the

coolant tube to operate effectively during torch operation. If

the tube is misaligned with the electrode, heat is not removed,

which causes the insert material in the electrode to wear away

more rapidly and shortens the operating life of the electrode. 

The specifications of the '255 and '617 patents demonstrate that

the purpose of the invention claimed was to design an electrode

and a coolant tube that would align together properly, within the

Case 1:05-cv-00373-JD Document 152 Filed 01/29/08 Page 8 of 25
9

torch, both to extend the life of the electrode and to facilitate

replacing the parts as needed in the field. 

The invention claimed "achieves reliable and repeatable

positioning of the coolant tube relative to the electrode" and

reduces errors in the alignment of a coolant tube relative to the

electrode. Col. 2, ll. 29-35. The '255 and '617 patents claim

electrodes, coolant tubes, and plasma arc torches. The '255

patent also claims a method for locating a coolant tube relative

to an electrode in a torch. As such, some of the claims are

directed at individual parts of the torch and others, such as

claims 12, 19, and 26 in the '255 patent and claims 19 and 26 in

the '617 patent, are combination claims directed to the torch

comprised of a torch body, an electrode, and a coolant tube.

The phrase, "wherein the coolant tube is not rigidly

attachable to a torch body," explains the alignment and junction

between the electrode and the tube and also limits the scope of

the electrode to one with that configuration. The combination

claims are directed at the electrode with the coolant tube within

a torch body. In those claims, the phrase describing the coolant

tube is not part of the phrase describing the electrode element. 

Instead, the tube is described as "comprising an elongated body .

. . wherein the elongated body is not rigidly attachable to the

torch body." Therefore, when a combination is claimed, the

Case 1:05-cv-00373-JD Document 152 Filed 01/29/08 Page 9 of 25
10

electrode element is not described in relation to the coolant

tube, which is a separate element of that claim. Conversely,

when only the electrode is claimed, the phrase describing the

coolant tube is necessary to provide a context for that part of

the invention directed to the electrode's surface which is

"adapted to mate and align with a coolant tube." The disputed

phrase does not claim the coolant tube in combination with the

electrode but limits the claimed electrode to one that is adapted

to align and mate with the described coolant tube.

C. Claim Differentiation

The doctrine of claim differentiation also supports a

construction that maintains the distinction between the electrode

claims and the combination claims. The doctrine of claim

differentiation provides a presumption that each claim in a

patent has a different scope. Sinorgchem Co., Shandong v. Int'l

Trade Comm'n, --- F.3d ---, 2007 WL 4465270 at *7 (Fed. Cir. Dec.

21, 2007). "To the extent that the absence of such difference in

meaning and scope would make a claim superfluous, the doctrine of

claim differentiation states the presumption that the difference

between claims is significant." Andersen Corp. v. Fiber

Composites, LLC, 474 F.3d 1361, 1369 (Fed. Cir. 2007) (internal

quotation marks omitted). Therefore, "claim differentiation

Case 1:05-cv-00373-JD Document 152 Filed 01/29/08 Page 10 of 25
1ATTC mistakenly contends that the doctrine of claim

differentiation arises only when a dependent claim includes a

limitation that is presumed not to be present in the independent

claim. While that is an application of the doctrine, see Acumed,

483 F.3d at 806, it may also apply in the context of two

independent claims, see AllVoice, 504 F.3d at 1247. 

2Claim 19 in the '255 patent and claim 26 in the '617 patent

are combination claims that also include an element for a means

of aligning the electrode and the tube.

11

takes on relevance in the context of a claim construction that

would render additional, or different, language in another

independent claim superfluous."1 AllVoice Computing PLC v.

Nuance Commc'ns, Inc., 504 F.3d 1236, 1247 (Fed. Cir. 2007)

(internal quotation marks omitted). 

Claim 19 in the '617 patent and claims 12 and 26 in the '255

patent, which are explicit combination claims, are directed to a

torch comprising a torch body, a coolant tube, and an electrode.2

The disputed phrase, "wherein the coolant tube is not rigidly

attachable to a torch body," in the electrode claims, refers to a

torch body along with the coolant tube. If the electrode claims

were converted to combination claims, they would duplicate the

scope of the explicit combination claims, rendering the

combination claims superfluous. In the absence of a strong

reason for rebutting the claim differentiation presumption, the

construction urged by ATTC is not correct.

Case 1:05-cv-00373-JD Document 152 Filed 01/29/08 Page 11 of 25
3In their motions for claim construction, Hypertherm

contends that ATTC is infringing claims 1 and 11 of the '988

patent, while ATTC states that it is accused of infringing claims

2 through 10, which depend from claim 1, and claims 12 and 14.

12

II. Disputed Claim Terms in the '988 Patent

The '988 patent pertains to an "Electrode for High Current

Density Plasma Arc Torch." Hypertherm accuses ATTC of infringing

"one or more claims of the '988 Patent."3 Am. Compl. ¶ 34. For

purposes of claim construction, Hypertherm and ATTC dispute the

meaning of the term "operating current" as used in the claims of

the '988 patent. Hypertherm contends that "operating current"

means "the current used during operation of the torch." ATTC

argues that "operating current" is limited to "a low current of

approximately 15-70 amps." ATTC also argues that claim 12, which

is a method claim, is directed to a method "for extending the

life of a low current electrode of approximately 15-70 amps."

The claims of the '988 patent use the term "operating

current" without further modification or definition. Claim 12

does not include an express limitation to a low current

electrode. The specification does not explicitly define the term

"operating current" or the electrode in claim 12.

ATTC asserts that the specification and prosecution history

of the '988 patent limit the term "operating current," as used in

Case 1:05-cv-00373-JD Document 152 Filed 01/29/08 Page 12 of 25
13

claim 1, to a low operating current and limit claim 12 to a low

current electrode. Despite its assertion, ATTC offers no

evidence from the prosecution history to support that theory. 

Instead, ATTC relies on references in the '988 patent to low

operating current and to operating current between 15 and 70

amperes. Hypertherm agrees that the purpose of the '988 patent

invention was to solve the problems caused by low operating

currents but argues that the claims are not limited to low

operating currents and that the invention can also work with

higher operating currents.

At the Markman hearing, ATTC emphasized two cases in which

the Federal Circuit construed claims to include limitations that

were not expressed in the claims themselves. See Microsoft Corp.

v. Multi-Tech Sys., 357 F.3d 1340, 1348-49 (Fed. Cir. 2004);

Alloc, Inc. v. Int'l Trade Comm'n, 342 F.3d 1361, 1368-71 (Fed.

Cir. 2003). In each of those cases, the court noted the general

rule that it is improper to read a limitation from the

specification into a claim. The court concluded that a patentee

may nevertheless limit claims by making it clear in the

specification "that the invention does not include a particular

feature . . . even though the language of the claims, read

without reference to the specification, might be considered broad

enough to encompass the feature in question." Microsoft, 357

Case 1:05-cv-00373-JD Document 152 Filed 01/29/08 Page 13 of 25
14

F.3d at 1347 (internal quotation marks omitted). To make that

determination, the court "looks to whether the specification

refers to a limitation only as a part of less than all possible

embodiments or whether the specification read as a whole suggests

that the very character of the invention requires the limitation

be a part of every embodiment." Alloc, 342 F.3d at 1370.

In this case, the invention claimed in the '988 patent is

summarized as follows:

 A plasma arc torch for cutting metal with a reactive

plasma gas such as oxygen or air uses an electrode with

a body formed of a high thermal conductive material and

an insert of a material with a high thermionic

emissivity. The insert is preferably hafnium and the

body is preferably copper. The insert is cylindrical

and has an emitting surface exposed to the plasma gas. 

The area (A) required for emitting varies as a function

of the maximum operating current (I) carried by the

electrode.

Col. 1, ll. 57-65. In functional terms, "the insert has a

diameter that is at least coextensive with the molten emission

spot produced on the emitting surface by the selected operating

current." Col. 1-2. In mathematical terms, "the current

sensitivity, which is defined as total current divided by the

available emission area, is a constant number." Col. 2, ll. 5-8. 

"Viewed as a process, the invention involves sizing the insert so

that the surface area exposed to the plasma gas is sufficient to

sustain a selected operating current without the arc impinging on

Case 1:05-cv-00373-JD Document 152 Filed 01/29/08 Page 14 of 25
15

the copper body and small enough to prevent the insert material

from heating to its boiling point." Co. 2., ll. 35-39. 

Nothing in that description of the invention suggests that

the "very character of the invention" requires a limitation to

low operating current. ATTC cites parts of the specification

which state that the invention was designed to address the

problem of electrode wear during low current uses. ATTC also

argues that the specification limits the operating current to 15

to 70 amperes by citing those current levels as the maximum

operating current used in tests whose results are displayed in

Table I. Col. 4, ll. 34-44. ATTC notes that the specification

distinguishes the '988 patent invention in discussing the

standard size of the insert used in electrodes previously, which

was developed in 260 ampere cutting systems.

Hypertherm counters that although the purpose of the

invention was to solve the low current problem, the electrodes

claimed in claims 1 and 11 and the method claimed in claim 12 are

not limited to low current uses. It explains that the test

results shown in Table 1 are limited to the stated maximum

current levels because those are the only tests that were done. 

Hypertherm also cites the statement in the specification that the

invention is particularly effective at low current levels but

Case 1:05-cv-00373-JD Document 152 Filed 01/29/08 Page 15 of 25
4ATTC denigrates that statement as merely generalized

boilerplate entitled to little weight, citing Aspex Eyewear, Inc.

v. Altair Eyewear, Inc., 386 F. Supp. 2d 526, 534-35 (S.D.N.Y.

2005). The statement in the '988 patent that the invention can

operate at other current levels is not the kind of

interchangeable disclaimer that was targeted in the cited case.

16

that "it can operate . . . at other current levels."4 Col. 6,

ll. 44-48.

It is undisputed that the challenged claims do not include a

limitation for low current. Although the invention was intended

to solve a particular problem with low current uses, ATTC has not

shown that the invention requires that limitation. Therefore,

the claims in the '988 patent are construed to mean what they say

without a limitation on the level of current. 

III. Disputed Claim Terms in the '510 Patent

Hypertherm accuses ATTC of infringing claim 10 of the '510

patent. Claim 10 is directed to a torch nozzle as follows:

 A nozzle for a plasma arc torch having a torch body,

and an electrode mounted in the body in relative [sic]

to the nozzle to define a plasma chamber there between,

the nozzle comprising:

a hollow, body portion defining a cavity; and

a substantially solid, head portion formed integrally 

with the body portion defining an exit orifice

extending from the chamber, the exit orifice having a

converging inlet and an outlet, wherein the exit

orifice has a length to diameter ratio greater than 3

and the inlet has a radius of curvature.

Case 1:05-cv-00373-JD Document 152 Filed 01/29/08 Page 16 of 25
17

Col. 6, ll. 47-57. The parties dispute the meaning of the terms

"exit orifice" and "radius of curvature."

A. Exit Orifice

Hypertherm contends that "exit orifice" means "[t]he opening

of the nozzle through which a plasma arc may pass before

attaching to a workpiece." ATTC interprets the term to mean

"[t]he exit opening of the nozzle following any velocity

reduction space and/or acceleration space, through which a plasma

arc may pass before attaching to a workpiece." The issue for

claim construction is whether the exit orifice excludes a

velocity reduction or acceleration space.

ATTC contends that the specification describes the exit

orifice without a velocity reduction or acceleration space. In

support of that argument, ATTC quotes a part of the "Background"

section which states that one factor influencing cutting speed

"is the shape and size of an exit orifice of the nozzle through

which the plasma arc exits the torch." ATTC also quotes a

statement in the detailed description section, "[a] plasma arc,

i.e., an ionized gas jet, passes through the exit orifice and

attaches to a workpiece . . . .," to show that "exit orifice" is

defined to exclude any velocity reduction or acceleration space.

Case 1:05-cv-00373-JD Document 152 Filed 01/29/08 Page 17 of 25
18

The quoted statements in the patent specification do not

mention a velocity reduction or acceleration space and do not

suggest that the exit orifice excludes that space. The statement

from the background section, explaining that the shape and size

of the exit orifice affect the cutting speed, supports an

interpretation that the exit orifice would include any changes in

size that were used to reduce or accelerate the plasma. 

Therefore, the specification is not helpful to ATTC.

ATTC also argues that the prosecution history of the '510

patent shows that "exit orifice" must be limited because

Hypertherm distinguished its invention in the '510 patent from

the '356 patent to Sakuragi by noting that the '356 patent had a

velocity reduction space that led to a tapering acceleration

space. Based on that statement, ATTC contends that Hypertherm

limited the exit orifice in the '510 nozzle to the part below any

space for velocity reduction and acceleration.

Hypertherm's cited response to the PTO described the

Sakuragi '356 patent as noted by ATTC. Hypertherm then

distinguished the '356 patent from its invention based on the

radius of curvature used in Hypertherm's invention stating that

Hypertherm "presents a solution for preventing double arcing as

in the present invention, Sakuragi, however, does not teach or

suggest providing a nozzle with a converging inlet having a

Case 1:05-cv-00373-JD Document 152 Filed 01/29/08 Page 18 of 25
19

radius of curvature for reducing double arcing as in the present

invention. Instead, Sakuragi teaches that double arcing should

be prevented by providing a velocity reduction space (N). 

Therefore Sakuragi teaches away from the claimed invention." Ex.

22 at 0061. That explanation shows that Hypertherm acknowledged

that the '510 and '356 patents had the same purpose but

distinguished the '510 patent from Sakuragi's '356 patent based

on the different means to prevent double arcing, not on the

location of the exit orifice, as ATTC contends.

ATTC also argues that Hypertherm described the exit orifice

in a way that excluded the velocity reduction and acceleration

space and that by relying on that definition during prosecution

of the patent, Hypertherm disclaimed a broader version. The

phrase ATTC relies on is Hypertherm's explanation of Sakuragi's

patent with reference to Figure 1a in that patent. Hypertherm

stated that Sakuragi's patent claims a velocity reduction space,

shown as part N, which leads to an acceleration space, shown as

part P, "which leads to the nozzle orifice." Because Hypertherm 

described the nozzle orifice as a separate component from the

reduction and acceleration spaces in Sakuragi's patent, ATTC

argues that Hypertherm's use of the term "exit orifice" in the

'510 patent excludes the reduction and acceleration spaces.

Case 1:05-cv-00373-JD Document 152 Filed 01/29/08 Page 19 of 25
20

The cited description did not disclaim parts of a nozzle for

purposes of distinguishing Hypertherm's application from the

Sakuragi patent. Instead, Hypertherm was merely describing the

figure shown in that patent. As addressed above, Hypertherm

distinguished its invention from Sakuragi's '536 patent not on

the location of the exit orifice but on different grounds - -

that is, that Sakuragi used velocity reduction and acceleration

to avoid double arcing while Hypertherm's invention relied on an

inlet with a radius of curvature. As such, Hypertherm did not

limit the exit orifice to that part below or excluding any space

used for velocity reduction or acceleration.

B. Radius of Curvature

The parties dispute the meaning of "radius of curvature" in

claim 10 of the '510 patent. Hypertherm contends that "radius of

curvature" means a curve. ATTC contends that the phrase means "a

curve, as distinguished from a sharp corner such of [sic] the

inlet such as shown in Fig. 1a of U.S. Pat. No. 5,591,356, having

a dimension in order of magnitude greater than 25% of the

diameter of the exit orifice." ATTC argues that "radius of

curvature" requires a further definition based on the patent

specification and the prosecution history. 

 

Case 1:05-cv-00373-JD Document 152 Filed 01/29/08 Page 20 of 25
21

1. Prosecution History

ATTC provides little developed argumentation in support of

its definition based on the prosecution history. In one

sentence, ATTC states that Hypertherm distinguished the radius of

curvature of its invention from the nozzle shown in Figure 1a of

Sakuragi's '536 patent "by noting '[t]he intlet of the nozzle

orifice [of Sakuragi . . .] is characterized by a sharp corner.'" 

Hypertherm agrees that the radius of curvature claimed in the

'510 patent is distinguished from a sharp corner. Therefore, the

cited prosecution history adds nothing to the claim construction

analysis.

2. Specification

ATTC contends that the specification distinguishes the

invention from prior art because prior art had an inlet into the

exit orifice with a sharp or square edge. ATTC also contends

that Hypertherm limited the radius of curvature to mean "greater

than 25% of the diameter of the exit orifice." During the

Markman hearing, ATTC argued that the radius of curvature must be

specifically defined to avoid ambiguity. Hypertherm contends

that construing "radius of curvature" to mean, simply, a curve

Case 1:05-cv-00373-JD Document 152 Filed 01/29/08 Page 21 of 25
5At the Markman hearing, counsel for Hypertherm referred to

the Abstract of the '510 patent as providing the definition of

the invention. Counsel for ATTC asserted, without citation to

authority, that the Abstract of a patent is not part of the

specification that could be considered for purposes of claim

construction. Contrary to ATTC's counsel's opinion, the Abstract

of a patent is part of the intrinsic evidence that may be

considered in construing a claim. See Hill-Rom Co. v. Kinetic

Concepts, Inc., 209 F.3d 1337, 1341 n.* (Fed. Cir. 2000); see

also Andersen, 474 F.3d at 1367 (citing abstract in support of

claim construction); Pip/Nip, Inc. v. Platte Chem. Co., 304 F.3d

1235, 1244 (Fed. Cir. 2002) (citing abstract as part of

specification in claim construction). 

22

is not ambiguous and was not further limited by the

specification.5

A curve is not a sharp corner. The further definition that

ATTC proposes, referring to Sakuragi's '536 patent, is not

supported by the specification. 

That part of ATTC's proposed construction that imposes a

ratio limitation on the radius of curvature is taken from a

preferred embodiment described in the specification, which may

not be imported into a claim. See Phillips, 415 F.3d at 1323. 

The specification does not include the "order of magnitude"

language that ATTC proposes, and ATTC provides no other source

for that limitation. Further, as Hypertherm points out, the

dependent claims of claim 10 add limitations for specific ratios

between the radius of curvature and the diameter of the exit

orifice, which raises a presumption that a specific ratio should

Case 1:05-cv-00373-JD Document 152 Filed 01/29/08 Page 22 of 25
23

not be read into claim 10. See Phillips, 415 F.3d at 1315. ATTC

has not provided a sufficient basis to overcome that presumption.

The phrase, "radius of curvature," as used in claim 10 of

the '510 patent is construed to mean a curve as distinguished

from a sharp angle.

 

Conclusion

For the foregoing reasons, the parties' motions for claim

construction (documents no. 88 and 89) are granted in part and

denied in part as follows:

I. Claim Construction for the '255 and '617 Patents

Claims 7 and 25 in the '255 patent and claim 12 in the '617

patent, with respect to their disputed terms, are construed to be

directed to an electrode that is adapted to mate and align with a

coolant tube which is not rigidly attachable to a torch body. 

Claims 7, 25, and 12 are not combination claims directed to both

an electrode and a coolant tube. 

II. Claim Construction for the '988 Patent

"Operating current," as used in claim 1 of the '988 patent

is the current used to operate the torch and is not limited to "a

low current of approximately 15-70 amps." Claim 12 is not

Case 1:05-cv-00373-JD Document 152 Filed 01/29/08 Page 23 of 25
24

limited to a method "for extending the life of a low current

electrode of approximately 15-70 amps."

III. Claim Construction for the '510 Patent

"Exit orifice" as used in claim 10 of the '510 patent means

that part of the nozzle that extends from the chamber and

includes both a converging inlet and an outlet. "Exit orifice"

is not limited to an area below space used for velocity reduction

and acceleration.

"Radius of curvature" as used in claim 10 of the '510 patent

means a curve as distinguished from a sharp corner. "Radius of

curvature" is not limited or defined with reference to any other

patent or with a particular ratio or dimension.

 ATTC's response to Hypertherm's motion for summary judgment

will be due as provided in the court's order of December 20,

2007. Motions for summary judgment may be filed within the time

allowed by the court's order of June 13, 2007.

With the disputed phrases construed, the parties would be

well advised to undertake a realistic review of the infringement

allegations and ATTC's counterclaims. The court will require the

parties to mediate prior to trial if they are unable to reach a

settlement on their own. The parties are in the best position to

determine when mediation will occur. The parties can select

Case 1:05-cv-00373-JD Document 152 Filed 01/29/08 Page 24 of 25
25

their mediator, and if the parties request, the court will

suggest for their consideration the name of a mediator who has

extensive experience mediating intellectual property disputes. 

SO ORDERED.

____________________________

Joseph A. DiClerico, Jr.

United States District Judge

January 29, 2008

cc: Jacob K. Baron, Esquire

Steven M. Bauer, Esquire

Seth M. Cannon, Esquire

Joseph A. Capraro, Jr., Esquire

Jeffrey M. Cross, Esquire

Joseph T. Dattilo, Esquire

Myriah M. Gambrell-Glenn, Esquire

John P. Guenther, Esquire

Jamie N. Hage, Esquire

Nicholas K. Holmes, Esquire

Rhett R. Krulla, Esquire

Jonathan A. Lax, Esquire

Barbara L. Mandell, Esquire

Richard C. Nelson, Esquire

W. Scott O'Connell, Esquire

Jeremy P. Oczek, Esquire

Allan J. Sternstein, Esquire

Case 1:05-cv-00373-JD Document 152 Filed 01/29/08 Page 25 of 25