UNITED STATES DISTRICT COURT FOR THE 

DISTRICT OF NEW HAMPSHIRE

Hypertherm, Inc.

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

Opinion No. 2009 DNH 013

American Torch Tip Company

S E A L E D O R D E R

Hypertherm, Inc. moves for partial summary judgment of

infringement by American Torch Tip Company (“ATTC”), accusing 

ATTC products of infringing certain claims of United States

Patent Nos. 6,946,617 (“‘617 patent), 7,019,255 (“‘255 patent”),

5,310,988 (“‘988 patent”), 5,977,510 (“‘510 patent”), and

6,207,923 (“‘923 patent”). ATTC moves for summary judgment that

its accused electrodes do not infringe Hypertherm’s patents and

that certain of the patents in suit are invalid. As required by

the court, Hypertherm and ATTC filed a joint notice specifying

which parts of their pending motions have been resolved or

otherwise affected by orders that have been issued since the

motions were filed. The court addresses the issues raised in the

motions in light of the joint notice.

Case 1:05-cv-00373-JD Document 480 Filed 02/03/09 Page 1 of 36
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Standard of Review

Summary judgment is appropriate when “the pleadings, the

discovery and disclosure materials on file, and any affidavits

show that there is no genuine issue as to any material fact and

that the movant is entitled to judgment as a matter of law.” 

Fed. R. Civ. P. 56(c). The party seeking summary judgment must

first demonstrate the absence of a genuine issue of material fact

in the record. See Celotex Corp. v. Catrett, 477 U.S. 317, 323

(1986). A party opposing a properly supported motion for summary

judgment must present competent evidence of record that shows a

genuine issue for trial. See Anderson v. Liberty Lobby, Inc.,

477 U.S. 242, 256 (1986). All reasonable inferences and all

credibility issues are resolved in favor of the nonmoving party. 

See id. at 255. “To be entitled to summary judgment, the party

with the burden of proof must provide evidence sufficient for the

court to hold that no reasonable trier of fact could find other

than in its favor.” Am. Steel Fabricators, Inc. v. Local Union

No. 7, 536 F.3d 68, 75 (1st Cir. 2008).

In this district, a motion for summary judgment must be

accompanied by a supporting memorandum that incorporates “a short

and concise statement of material facts, supported by appropriate

record citations, as to which the moving party contends there is

no genuine issue to be tried.” LR 7.2(b)(1). A motion opposing

Case 1:05-cv-00373-JD Document 480 Filed 02/03/09 Page 2 of 36
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summary judgment must also incorporate “a short and concise

statement of material facts, supported by appropriate record

citations, as to which the adverse party contends a genuine

dispute exists so as to require trial.” LR 7.2(b)(2). 

Importantly, “[a]ll properly supported material facts set forth

in the moving party’s factual statement shall be deemed admitted

unless properly opposed by the adverse party.” Id.

I. Infringement of the ‘255 and ‘617 Patents

Hypertherm moves for summary judgment that certain accused

ATTC electrodes infringe claim 7 of the ‘255 patent and Claim 12

of the ‘617 patent. ATTC moves for summary judgment on its

defense of invalidity due to anticipation by the ‘988 patent and

that its accused electrodes do not infringe Claims 7 and 25 of

the ‘255 patent or Claim 12 of the ‘617 patent. The pertinent

limitations of the asserted claims of the ‘255 and ‘617 patents

are the same, which is why the parties have grouped them

together.

The parties agree, as is demonstrated in their joint notice,

that the anticipation issue and some of the infringement claims

have been resolved by the court’s previous orders. Based on the

joint notice, infringement of Claim 7 of the ‘255 patent by the

Case 1:05-cv-00373-JD Document 480 Filed 02/03/09 Page 3 of 36
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following accused ATTC products, for purposes of Hypertherm’s

motion, is unresolved:

220307_ATT, Original

220339_ATT, Original

220181_ATT, Original

220187_ATT, A

220192_ATT, A

220339_ATT, Original

220352_ATT, A

220435_ATT, A

Hypertherm also accuses 220307_ATT, Original, and 220339_ATT,

Original, of infringing Claim 12 of the ‘617 patent.

Infringement of Claims 7 and 25 of the ‘255 patent and Claim

12 of the ‘617 patent by the following accused ATTC products is

unresolved for purposes of ATTC’s motion:

120826, Original

120827_ATTC, Original

120828_ATTC, C

120927, E

120929_ATTC, G

120931, Original

220011, C

220047_ATTC, Original

Case 1:05-cv-00373-JD Document 480 Filed 02/03/09 Page 4 of 36
1Confusingly the accused parts exist in several versions

which share the same part number and are distinguishable by a

suffix of ATT or ATTC or no suffix and by a referenced version of

the product.

5

220065_ATTC, Original

220239_ATTC, C

220181_ATT, Original

220187_ATT, A

220192_ATT, A

220339_ATT, A

220352_ATT, A

220435_ATT, A

The pending motions are addressed only with respect to the issues

that have not been resolved by prior orders.

Hypertherm seeks summary judgment that eight of ATTC’s

electrodes, two electrodes in the group labeled “Second ‘255

Accused Electrodes” (part numbers 220307_ATT, Original, and

220339_ATT, Original) and all six electrodes in the group labeled

“Third ‘255 Accused Electrodes” (220181_ATT, Original;

220187_ATT, A; 220192_ATT, A; 220339_ATT, Original; 220352_ATT,

A; and 220435_ATT, A) infringe claim 7 of the ‘255 patent. In

its own motion, ATTC seeks summary judgment that ten of its

accused products do not infringe Claims 7 and 25 of the ‘255

patent.1 

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“To prove direct infringement, the plaintiff must establish

by a preponderance of the evidence that one or more claims of the

patent read on the accused device literally or under the doctrine

of equivalents.” Cross Med. Prods., Inc. v. Medtronic Sofamor

Danek, Inc., 424 F.3d 1293, 1310 (Fed. Cir. 2005). “Literal

infringement requires that each and every limitation set forth in

a claim appear in an accused product.” Id. (internal quotation

marks omitted). Patent infringement is a factual question. 

Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1334

(Fed. Cir. 2008). 

ATTC makes electrodes as replacement parts for plasma arc

cutting systems, including systems designed and manufactured by

Hypertherm. ATTC does not make the coolant tubes used in

electrodes. Claim 7 of the ‘255 patent provides as follows:

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 is substantially the same, adding only that the surface

on an interior portion is “in a region between the open end and

the closed end.” Claim 12 of the ‘617 patent repeats the Claim 7

Case 1:05-cv-00373-JD Document 480 Filed 02/03/09 Page 6 of 36
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limitations and adds “an opening in the second end of the coolant

tube does not contact an inner surface of the electrode.”

Hypertherm contends that ATTC’s accused electrodes meet

every limitation of Claim 7 of the ‘255 patent and Claim 12 of

the ‘617 patent. ATTC contends that its listed electrodes do not

infringe Claim 7 or Claim 25 of the ‘255 patent or Claim 12 of

the ‘617 patent. ATTC concedes the other elements of the Claims

but argues that its accused electrodes do not have a “surface . .

. adapted to mate and align with a coolant tube along a direction

of a longitudinal axis of the coolant tube.” Specifically, ATTC

argues that its electrodes do not align the coolant tube and that

its electrodes were not “adapted to” mate and align with the

coolant tubes.

Hypertherm submitted color-coded drawings of a

representative ATTC electrode overlaid on a Hypertherm coolant

tube to show the “adapted to mate and align” limitation. The

drawings show that the coolant tube fits down inside the

representative accused ATTC electrode and that the electrode has

a step, groove, or notch on the inside surface that contacts a

corresponding surface on the Hypertherm coolant tube. ATTC does

not dispute that the drawings are accurate representations of its

accused electrodes.

Case 1:05-cv-00373-JD Document 480 Filed 02/03/09 Page 7 of 36
2Hypertherm mistakenly cites to Exhibit 23, with unrelated

deposition testimony, instead of Exhibit 24.

3Only one ATTC electrode, 220181, is referenced in the

submitted deposition excerpts. ATTC part number 220181_ATTC is

one of the accused parts in the group of “Third ‘255 Accused

Electrodes.” 

8

A. Mate and Align 

Hypertherm also submitted testimony from the Rule 30(b)(6)

depositions of Jeffrey K. Walters, Sr., an ATTC principal, to

show that ATTC admitted that its electrodes were adapted to mate

and align with a coolant tube.2 See Fed. R. Civ. P. 30(b)(6).

During the depositions, Hypertherm’s counsel asked Walters

whether an ATTC electrode was adapted to mate and align with a

floating coolant tube.3 Walters explained that it would depend

on the design of the coolant tube but that if a Hypertherm

(floating) coolant tube were used, “the water tube would hit on

that step, mate and hit on that step.” Ex. 22 at 55. In a

subsequent deposition, Walters agreed with Hypertherm’s counsel,

however, that when a floating coolant tube was used in the ATTC

electrode, the notch in the ATTC electrode was meant to mate and

align with or hit the coolant tube.

ATTC argues that Walters said only that the notch would mate

with and hit the coolant tube not mate and align with the tube. 

ATTC contends, based on that difference in language, that Walters

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4The question of the meaning of “adapted to” arose in the

context of ATTC’s defense that the ‘988 patent anticipated the

‘255 patent because its electrode was “capable of” mating and

aligning with a coolant tube. Hypertherm responded that “adapted

to” did not mean merely “capable of” but instead meant that the

electrode was designed for that purpose.

9

did not admit that the ATTC electrode had a surface adapted to

align with the coolant tube. Taking Walters’s deposition

testimony as a whole, however, he admitted that when ATTC’s

electrodes were used with floating coolant tubes, such as those

manufactured by Hypertherm, the interior would mate and align

with the tube. ATTC’s narrow focus on an asserted difference

between “align” and “hit,” in this context, is unavailing. 

Therefore, the evidence establishes that ATTC’s accused

electrodes, listed by Hypertherm in its motion, have an interior

surface that mates and aligns with a coolant tube.

B. Adapted To

ATTC contends in opposition to Hypertherm’s motion and in

support of its own motion that because Hypertherm’s expert

witness construed the term “adapted to” to mean designed for the

purpose of mating and aligning, Hypertherm must present evidence

of ATTC’s subjective intent in designing its electrodes to prove

infringement.4 Hypertherm responds that intent is not part of

the infringement analysis and also offers evidence that ATTC

Case 1:05-cv-00373-JD Document 480 Filed 02/03/09 Page 9 of 36
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intended to copy Hypertherm’s patented products in designing its

accused electrodes. ATTC explains that the intent limitation

arises from Hypertherm’s expert’s claim construction, not from a

requirement that intent generally be shown in proving

infringement. 

Claim construction is a legal issue for the court to decide. 

See iLOR, LLC v. Google, Inc., 550 F.3d 1067, 1070 (1st Cir.

2008). Hypertherm urges the court to adopt its expert’s opinion

that “adapted to” means “designed for the purpose of.” 

Hypertherm further argues that the ‘255 and ‘617 patents claimed

an electrode surface that is defined and limited by its stated

purpose in relation to the structure of the coolant tube. For

purposes of infringement, ATTC agrees with Hypertherm’s proffered

claim construction. Therefore, the court construes “adapted to”

as used in Claims 7 and 25 of the ‘255 patent and Claim 12 of the

‘617 patent to mean “designed for the purpose of.”

ATTC offers evidence that its electrodes were not designed

for the purpose of mating and aligning with a coolant tube. 

Instead, ATTC asserts, the design of the notch in the interior

surface is the inadvertent result of the machining process. 

Hypertherm offers evidence that ATTC purposefully copied

Hypertherm’s electrodes, including the notch. Therefore, the

Case 1:05-cv-00373-JD Document 480 Filed 02/03/09 Page 10 of 36
5ATTC also contends that the coolant tube, not the

electrode, provides alignment. ATTC argues that without the

alignment surface on the tube, it would “‘flop’ lovely” from side

to side within the electrode. For that reason, ATTC asserts that

the step or notch on the interior surface of its electrodes does

not align the coolant tube. As Hypertherm points out, however,

the step or notch does keep the tube aligned longitudinally, as

Walters agreed in his deposition testimony. 

11

purpose of the design of ATTC’s electrodes is a disputed factual

issue, precluding summary judgment for both parties.5

II. The ‘988 Patent

Hypertherm moves for summary judgment that certain ATTC

electrodes infringe Claim 1 of the ‘988 patent. ATTC moves for

summary judgment that the ‘988 patent is invalid, and

alternatively, that certain ATTC electrodes do not infringe the

‘988 patent. The parties agree that the issue of invalidity has

been resolved as to Claims 1 through 10 of the ‘988 patent but

invalidity has not been resolved as to Claims 11 and 12. They

agree that prior orders have affected the motions as to 

infringement by listed electrodes but disagree as to the effect.

A. Invalidity

ATTC contends that Claims 11 and 12 of the ‘988 patent are

invalid as obvious, based on the prior art in the background

Case 1:05-cv-00373-JD Document 480 Filed 02/03/09 Page 11 of 36
6While ATTC asserts that Claims 11 and 12 of the ‘988 patent

were obvious in light of the background section of the ‘988

patent, Hypertherm argues that ATTC has not shown anticipation. 

Obviousness and anticipation are two different defenses requiring

different proof. Compare 35 U.S.C. § 102 with 35 U.S.C. § 103. 

12

section of the ‘988 patent. ATTC’s expert witness provides

opinions and an analysis to support ATTC’s obviousness defense. 

Hypertherm contends that ATTC addressed only one of the elements

of Claims 11 and 12 and, therefore, failed to prove invalidity.6

A defendant bears the burden of proving a patent claim

invalid by clear and convincing evidence. Eisai Co. Ltd. v. Dr.

Reddy’s Labs., Ltd, 533 F.3d 1353, 1356 (Fed. Cir. 2008). A

patent claim is invalid due to obviousness “if the differences

between the subject matter sought to be patented and the prior

art are such that the subject matter as a whole would have been

obvious at the time the invention was made to a person having

ordinary skill in the art to which said subject matter pertains.” 

35 U.S.C. § 103. Obviousness is a factual determination based on

considering factors including: “1) the scope and content of the

prior art, 2) the level of ordinary skill in the art, 3) the

differences between the claimed invention and the prior art, and

4) evidence of secondary factors, also known as objective indica

of non-obviousness.” Eisai, 533 F.3d at 1356. 

Case 1:05-cv-00373-JD Document 480 Filed 02/03/09 Page 12 of 36
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The ‘988 patent pertains to an “Electrode for High Current

Density Plasma Arc Torch.” Claim 11 is directed to an electrode

with an 

improvement comprising [an insert of a material

characterized by a high thermionic emission] having its

emissive surface area corresponding to the level of the

operating current carried by the electrode, said

emissive surface area being (I) at least equal to the

area of the emissive spot produced by cutting at a

given current level and (ii) sufficiently small that

the insert material in said emissive area does not

boil, and the diameter of the insert being selected to

exceed the diameter of said emission spot by an amount

that reliably isolates the arc from the electrode body

to produce a constant current density over said insert

emissive area of about 6.0x104 amperes/inch2.

Claim 12 is a method claim directed to “extending the life of an

electrode of a plasma arc cutting torch, particularly a high

definition torch characterized by a high current density and a

small diameter emissive spot on an insert of a high thermionic

emission material . . .” which involves “selecting the area of

the insert exposed to the nozzle . . .” and “said selecting

producing a current density during cutting over said exposed area

of about 6.0x104 amperes/inch2.”

During claim construction, ATTC argued that the term

“operating current” used in Claim 11 was limited to “a low

current of approximately 15-70 amps” and that Claim 12 was

directed to “extending the life of a low current electrode of

approximately 15-70 amps.” The court disagreed, concluding that

Case 1:05-cv-00373-JD Document 480 Filed 02/03/09 Page 13 of 36
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the challenged claims do not include a limitation for low

current. ATTC asserts that without the low current limitation,

the prior art described in the background of the ‘988 patent

would have current densities within the range of the densities

covered by Claims 11 and 12 of the ‘988 patent. 

ATTC contends that the challenged claims were obvious based

on the prior art cited in the ‘988 patent because the current

densities in Claims 11 and 12 fall within the range of current

densities disclosed by prior art. ATTC argues that because of

the overlap in range, the claims are presumed to be obvious. 

Ormoc Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311 (Fed. Cir.

2006)(“When the difference between the claimed invention and the

prior art is the range or value of a particular variable, then a

prima facie rejection is properly established when the difference

in range or value is minor.”) (internal quotation marks omitted).

Hypertherm responds that ATTC is overlooking the part of the

invention that requires selecting the diameter of the insert to

exceed the diameter of the emissive spot.

As the party with the burden of proof on the defense of

obviousness, to be entitled to summary judgment, ATTC must show

that Claims 11 and 12 of the ‘988 patent are obvious by clear and

convincing evidence, such that no reasonable juror could find

otherwise. See Am. Steel Fabricators, 536 F.3d at 75; Esai, 533

Case 1:05-cv-00373-JD Document 480 Filed 02/03/09 Page 14 of 36
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F.3d at 1356. The court is not persuaded that ATTC has carried

its burden here. Therefore ATTC’s motion for summary judgment is

denied as to invalidity of Claims 11 and 12.

B. Infringement

Hypertherm moves for summary judgment that certain ATTC

electrodes infringe Claim 1 of the ‘988 patent. ATTC moves for

summary judgment that its accused electrodes do not infringe

Claims 1 through 10, 11, and 12 of the ‘988 patent. The parties

agree that the court’s prior orders have affected the

infringement issues but disagree as to the effect.

1. Hypertherm’s Motion - Infringement of Claim 1

The parties agree that the issue of whether ATTC electrodes

infringe Claim 1 of the ‘988 patent, as asserted in Hypertherm’s

motion for summary judgment, remains as to the following parts:

120111_ATTC, Q

120410_ATTC, W

120517, C

120683, F

120785, K

120793, K

Case 1:05-cv-00373-JD Document 480 Filed 02/03/09 Page 15 of 36
7ATTC mentions in passing that it is entitled to summary

judgment on the listed electrodes. In this district, however,

objections to pending motions cannot include affirmative motions

for relief. LR 7.1(a)(2).

16

Hypertherm asserts infringement, supported by the opinion of its

expert witness, E. Smith Reed.

ATTC objects to summary judgment, arguing that during the

“relevant period” it only manufactured certain electrodes “at the

insert diameters and currents.” ATTC cites its “Exhibit I” and

“Walters Decl. at ¶ 65" to support that assertion. ATTC also

states that “most of the accused electrodes fall outside of the

claimed values in claim 1" and that its expert, James Sprague,

“confirms the fact that such electrodes do not infringe by his

analysis.” ATTC then provides a chart of electrodes with dates

of manufacture and valuations that it contends do not infringe

Claims 1 through 10.7 ATTC provides no record citation to

support its chart.

To oppose a properly supported motion for summary judgment,

ATTC is required to provide a statement of properly support facts

to oppose Hypertherm’s statement of facts. ATTC failed to

provide any factual statement in its objection to summary

judgment. A general reference to Sprague’s report, which

addresses electrodes without the complete number and letter

identification necessary to identify them, is insufficient to

Case 1:05-cv-00373-JD Document 480 Filed 02/03/09 Page 16 of 36
8Exhibit 5 is appended to this order.

17

oppose Reed’s more specific report. In addition, the electrode

chart ATTC provides is not supported by any citation to the

record.

In the absence of a properly supported opposition,

Hypertherm’s properly supported facts as to infringement of Claim

1 of the ‘988 patent are deemed admitted.

Therefore, Hypertherm is entitled to summary judgment that the

listed electrodes infringe Claim 1 of the ‘988 patent. 

2. ATTC’s Motion - No Infringement of Claims 1-10

Summary judgment has been decided in Hypertherm’s favor that

the six electrodes listed above infringe Claim 1 of the ‘988

patent. ATTC moves for summary judgment that six other

electrodes, which were originally accused of infringement but

were not included in Hypertherm’s expert’s report, do not

infringe the ‘988 patent. Hypertherm states that it no longer

accuses certain electrodes of infringement and lists the

“unaccused versions” of ATTC’s electrodes in Exhibit 5. 

Therefore, Hypertherm’s infringement claims, as to the electrodes

listed in Exhibit 5, are dismissed.8

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The parties disagree as to which of the electrodes

identified by ATTC in its motion for summary judgment of no

infringement of Claims 1-10 of the ‘988 patent remain in dispute. 

They agree that the July 24, 2008, order held that Part Nos.

120667/220021 (A and B) 120683 (Original, A-E), and 120690 (C-H,

J) infringe. Therefore, those parts will not be considered for

purposes of ATTC’s pending motion.

 Hypertherm asserts that it no longer accuses most of the

listed parts of infringement, which it has identified on a

reproduction of ATTC’s chart. Therefore, as noted above,

Hypertherm’s claims of infringement as to those parts are

dismissed. According to Hypertherm’s reproduction of ATTC’s

chart, the only part listed in ATTC’s pending motion that

requires a decision is 120683, F.

ATTC’s disagreement is opaque. It asserts, apparently, that

the court must render a summary judgment decision pertaining to

electrodes that Hypertherm no longer accuses of infringement. 

The claims as to those electrodes are dismissed. ATTC also

asserts that “[t]o the extent that the basis for non-infringement

of all versions of all products accused of infringing claims 1-10

of the ‘988 Patent, as asserted in the replies to Hypertherm’s

motions or . . . (Docket No. 203), does not require expert

testimony, a decision is still required for all versions of the

Case 1:05-cv-00373-JD Document 480 Filed 02/03/09 Page 18 of 36
9It appears, however, that ATTC may be contesting the July

24, 2008, order, which would not be an appropriate basis for

arguing that issues remain in dispute.

10The parties agree that Claims 2 through 10 are dependent

on Claim 1.

19

accused products with regard to those non-infringement

positions.” ATTC references no specific electrodes by part

number or versions of part numbers that it believes remain in

dispute. 

The court cannot decipher ATTC’s statement and therefore,

cannot determine if ATTC suggests that additional electrodes on

its list should be considered in the context of the pending

summary judgment motions.9 Based on the parties’ responses, the

court will consider ATTC’s motion for summary judgment of no

infringement as to Part No. 120683, F. Because summary judgment

has been decided in Hypertherm’s favor that Part No. 120683, F,

infringes Claim 1 of the ‘988 patent, however, that issue now has

been decided. The motion is denied as to Claims 1 through 10.10

3. ATTC’s Motion - No Infringement of Claims 11, 12

ATTC moved for summary judgment of no infringement of claims

11 and 12 by all but one of its accused electrodes under its

construction of the disputed claim term. In the alternative, it

moved for infringement of only listed electrodes if Hypertherm’s

Case 1:05-cv-00373-JD Document 480 Filed 02/03/09 Page 19 of 36
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construction were adopted. In their joint notice, the parties

agree that infringement has been decided as to Part Nos.

120111_ATTC (Original, A-H, J-N, P); 120112 (F-H, J, M-N); 120667

(A); 220181_ATTC (A-C), and 220187_ATTC (Original, A). 

Hypertherm contends that infringement by the other parts listed

in its motion for summary judgment granted by the July 24, 2008,

order is also decided.

ATTC contends that because Hypertherm did not list the

additional products in a prior joint notice it is bound by the

previous (shorter) list. The court disagrees. To the extent

infringement has been decided as to particular ATTC parts, that

issue will not be considered here.

Hypertherm, again, represents that it no longer accuses

certain parts of infringement. Those parts are listed in Exhibit

5 and in the Joint Notice at page 23. Hypertherm’s claims as to

the listed, non-accused, parts are dismissed.

Therefore, infringement of Claims 11 and 12 as to the

following ATTC parts remains in dispute:

120111ATTC, Q

120667, B

120112ATTC, K 

For purposes of determining infringement, the parties

disagree about the meaning of the phrase “said emissive area of

Case 1:05-cv-00373-JD Document 480 Filed 02/03/09 Page 20 of 36
21

about 6.0x104 amperes/inch2" as used in Claim 11 and “said

exposed area of about 6.0x104 amperes/inch2" as used in Claim 12. 

In particular, they dispute the meaning of “about” as used in

each phrase. ATTC contends that “about” means “approximately

values within 4% of the claimed 6.0x104 amperes/inch2.” 

Hypertherm calculated a broader range of current densities,

varying by 25% from 6.0x104 amperes/inch2, as being within the

meaning of the phrase “about 6.0x104 amperes/inch2." 

Determining infringement is a two-step process that requires

the court first to construe the meaning and scope of the asserted

claims and then to compare the properly construed claims to the

accused product. Stumbo v. Eastman Outdoors, Inc., 508 F.3d

1358, 1361 (Fed. Cir. 2007). The parties’ dispute over the

meaning of “about” presents a claim construction issue, which

they failed to raise in their claim construction motions, at the

Markman hearing, or in response to the court’s claim construction

order issued a year ago. It is necessary to construe the term

“about” before considering infringement. 

a. Claim Construction

Claim construction is a legal issue for the court to decide. 

iLOR, 550 F.3d at 1070. “In determining the meaning of a

disputed claim limitation, [the court] look[s] to the intrinsic

Case 1:05-cv-00373-JD Document 480 Filed 02/03/09 Page 21 of 36
22

evidence, including the claim language, written description, and

prosecution history, as well as to extrinsic evidence.” TIP

Sys., LLC v. Phillips & Brooks/Gladwin, Inc., 529 F.3d 1364, 1369

(Fed. Cir. 2008). The analysis begins by considering the claim

language itself, taken in the context of the specification. 

Boston Scientific Scimed, Inc. v. Cordis Corp., --- F.3d ---,

2009 WL 89246, at *4 (Fed. Cir. Jan. 15, 2009). “Claim terms are

generally construed in accordance with the ordinary and customary

meaning they would have to one of ordinary skill in the art.” 

Netcraft Corp. v. eBay, Inc., 549 F.3d 1394, 1396 (Fed. Cir.

2008).

A principal object of the invention claimed by the ‘988

patent was “to provide an electrode for plasma arc cutting torch

that operates with a reactive plasma gas at a low operating

current level and nevertheless has a useful life several times

greater than that obtained with conventional electrodes for the

same applications.” ‘988 patent, Col. 1, ll. 43-48. In

summarizing the invention, the patent specification explains that

the electrode body is formed of “a high thermal conductive

material [preferably copper] and an insert of a material with a

high thermionic emissivity [preferably hafnium].” Id., ll. 59-

60. The insert has “an emitting surface exposed to the plasma

Case 1:05-cv-00373-JD Document 480 Filed 02/03/09 Page 22 of 36
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gas.” Id., l. 63. The size of the emitting surface “varies as a

function of the maximum operating current.” Id., ll. 63-64.

The disputed phrase, “about 6.0x104 amperes/inch2," is a

calculation of the current density of the insert during operation

of the torch. Current density is defined as “total current

divided by the available emission area.” Col. 2, ll. 6-7. The

insert diameter must be small enough to operate at the selected

current without boiling but large enough “to ensure that the arc

does not attack the body end surface [] immediately adjacent the

insert.” Id., col. 2, ll. 35-36; col. 4, ll. 25-26. Because the

area of the hafnium insert must be “at least equal to, and

preferably a little bigger than, the emitting area required by

the selected value of the operating current,” the size of the

area varies depending on the operating current selected. Col. 2,

ll.9-10. “The relationship between the current I and the area A

of the insert emission surface [] exposed to the plasma gas in

the plasma chamber [] vary so that the current density I/A is

generally constant.” ‘988 patent, Col. 4, ll. 17-21. “Allowing

for a non-impingement band, the current density in this preferred

form is about 6.0x104 amperes/inch2.” Col. 2, ll. 15-18.

Relying on the test results in Table 1 of the ‘988 patent

and suitable borders for inserts in a range of .003 to .006 inch,

Hypertherm calculated that “about 6.0x104 amperes/inch2" means a

Case 1:05-cv-00373-JD Document 480 Filed 02/03/09 Page 23 of 36
24

broad range of current densities from 4.5x104 amperes/inch2 to

7.6x104 amperes/inch2, which vary by approximately 25% from

6.0x104 amperes/inch2. ATTC contends that Hypertherm is wrong

because the 25% variation is caused by using the largest areas

with the lowest current, which is contrary to the teaching of the

‘988 patent. Instead, ATTC argues that the selected current and

the area of the emission spot are related so that small area

correlates with low current. ATTC calculates a range of from

5.89x104 amperes/inch2 to 6.22x104 amperes/inch2.

The ‘988 patent teaches that the current level and the size

of the emission spot vary to yield a constant current density

level of about 6.0x104 amperes/inch2. The current level is

divided by the size of insert to determine current density, which

must be “about 6.0x104 amperes/inch2.” Hypertherm’s

calculations, which add larger borders to low ampere currents and

result in a broad range of current density values, do not conform

to the requirement that the size of the insert is related to the

level of operating current. In addition, a 25% variation is not

“about” the stated value. The court construes the phrase “about

6.0x104 amperes/inch2" to mean values calculated in conformity

with the requirements of the ‘988 patent that are close to the

stated value and within a slight variation, which is less than

25%.

Case 1:05-cv-00373-JD Document 480 Filed 02/03/09 Page 24 of 36
25

b. Infringement

Based on the court’s construction of the phrase “about

6.0x104 amperes/inch2,” ATTC is entitled to summary judgment that

its electrodes, parts numbers 120111ATTC, Q; 120667, B, and

120112ATTC, K do not literally infringe Claims 11 or 12 of the

‘988 patent.

4. Doctrine of Equivalents

“Under the doctrine of equivalents, a product or process

that does not literally infringe upon the express terms of a

patent claim may nonetheless be found to infringe if there is

‘equivalence’ between the elements of the accused product or

process and the claimed elements of the patented invention.” 

Voda v. Cordis Corp., 536 F.3d 1311, 1324 (Fed. Cir. 2008)

(internal quotation marks omitted). The doctrine of equivalents

cannot be used, however, “for subject matter relinquished when a

patent claim is narrowed during prosecution.” Id. Prosecution

history estoppel operates in two ways: (1) when the patent

applicant narrows a claim by amendment or (2) when the applicant

narrows the scope of the claim through argument to the patent

examiner. Id. at 1325. A narrowing amendment “creates a

presumption [] that the applicant surrendered the territory

Case 1:05-cv-00373-JD Document 480 Filed 02/03/09 Page 25 of 36
26

between the original claims and the amended claims.” Lucent

Techs., Inc. v. Gateway, Inc., 525 F.3d 1200, 1218 (Fed. Cir.

2008). To rebut the presumption, the patentee must show that its

“objectively apparent reason” for the narrowing amendment was

“peripheral, or not directly relevant to the alleged equivalent.” 

Id. 

In his report, Reed stated that if the phrase “about 6.0x104

amperes/inch2" were construed narrowly, as not including the

broad range of densities he proposed, ATTC’s accused products

would infringe Claims 11 and 12 under the doctrine of

equivalents. ATTC contends that Hypertherm is precluded by the

prosecution history of the ‘988 patent from proving infringement

under the doctrine of equivalents. Hypertherm admits that it

amended the claims to include the particular current density

levels but argues that it can overcome the presumption of

estoppel.

The claim limitation at issue is the current density of

“about 6.0x104 amperes/inch2.” To overcome the estoppel

presumption, Hypertherm contends that ATTC’s accused products

have equivalent border sizes. As ATTC points out, however,

border sizes are not elements of the claims of the ‘988 patent. 

Therefore, Hypertherm has not overcome the presumption that it is

Case 1:05-cv-00373-JD Document 480 Filed 02/03/09 Page 26 of 36
27

estopped by its prosecution history from arguing infringement of

Claims 11 and 12 under the doctrine of equivalents.

III. Infringement of the ‘510 Patent

The parties agree in their Joint Notice that Hypertherm’s

motion for summary judgment of infringement of Claim 10 of the

‘510 patent has been resolved by prior orders. To the extent

they disagree about the effect of prior orders on issues of

infringement of the ‘510 patent, the court notes that the parties

agreed in their Joint Notice dated November 26, 2008, that ATTC’s

motion for summary judgment regarding the ‘510 patent was not

resolved or changed by the court’s order issued on July 24, 2008. 

Therefore, any claimed conflicts between the court’s July 24

order and the order issued on January 7, 2009, must be resolved

in light of the parties’ representation to the court, which the

court relied on in issuing the January 7, 2009, order. 

IV. Infringement of the ‘923 Patent

The parties agree that Hypertherm’s motion for summary

judgment of infringement of Claim 13 of the ‘923 patent has been

resolved by prior orders. They also agree that some, although

not all, of the products listed in ATTC’s motion for summary

judgment of no infringement of the ‘923 patent have been

Case 1:05-cv-00373-JD Document 480 Filed 02/03/09 Page 27 of 36
11For purposes of summary judgment, the parties disputed

which products were accused and which had the distinguishing

feature claimed by ATTC. The court assumes that those issues do

not pertain to the parts listed by the parties as remaining in

dispute.

28

resolved. As to the parts that require an infringement decision,

the parties also disagree as to the effect of the prosecution

history. The products that remain in dispute are parts

numbered:11

120826, Original

120827_ATTC, Original

120828_ATTC, C

120927, E

120929_ATTC, G

120931, Original

220011, C

220047_ATTC, Original

220065_ATTC, Original

220239_ATTC, C

ATTC seeks summary judgment that its accused products do not

literally infringe the ‘923 patent and that the doctrine of

equivalents does not apply. The ‘923 patent pertains to “plasma

arc torches, and more particularly to plasma arc torches having a

torch tip designed to produce a substantially columnar shield

Case 1:05-cv-00373-JD Document 480 Filed 02/03/09 Page 28 of 36
29

flow that surrounds the plasma arc without substantially

interfering with the plasma arc.” Col. 1, ll. 7-10. Plasma arc

torches have a nozzle and a shield that direct two separate gas

flows, a plasma gas flow and a shield gas flow. The problem

addressed by the ‘923 patent was to direct the shield gas flow

into a column around the plasma gas flow, rather than at an angle

to it as in prior art, because the angle caused the shield flow

to impinge on and disrupt the plasma arc.

A. Literal Infringement

ATTC seeks summary judgment that its accused products do not

infringe the ‘923 patent. ATTC focuses on elements of ‘923

patent claims that describe a shield with an exit orifice “having

an inlet and an outlet, the shield exit orifice dimensioned such

that the nozzle head portion extends to a position between the

inlet and the outlet of the shield exit orifice . . . .” Col. 5-

6, ll. 66-1 (Claim 1); see also Claims 8 & 13. Based on that

language, ATTC asserts that the ‘923 patent requires that the

nozzle head must extend past the inlet of the shield’s exit

orifice. ATTC further asserts that its accused products do not

meet that element of the ‘923 patent and, therefore, are not

infringing.

Case 1:05-cv-00373-JD Document 480 Filed 02/03/09 Page 29 of 36
12Hypertherm’s argument that the drawings create a factual

issue based on the relative locations of the inlet is not

persuasive, however.

30

In support of its position, ATTC contends that “inlet” of

the shield exit orifice means “the point where the shield head is

parallel to the central axis of the shield exit orifice.” 

Because the inside wall of the shield area in ATTC products is

sloped, ATTC argues that the “inlet” of the shield exit orifice

for its products is located at the bottom of the sloped area

where the angle of the shield changes from a slope to

perpendicular. ATTC further contends that the nozzles of its

accused products extend to the point of the inlet but do not

extend past the inlet of the exit orifice as required by the ‘923

patent claims.

In contrast, Hypertherm argues that the “inlet” of the exit

orifice of ATTC’s products is at the top, not the bottom, of the

sloped area. As a result, Hypertherm contends that ATTC’s

products infringe the ‘923 patent because the nozzles extend

below the inlet of the exit orifice. Hypertherm challenges

ATTC’s drawing of the parts of its products in relation to

Hypertherm’s design.12 Hypertherm also contends that the

disagreement between its expert, Reed, and ATTC’s expert,

Case 1:05-cv-00373-JD Document 480 Filed 02/03/09 Page 30 of 36
31

Sprague, as to the location of the inlet to the exit orifice in

ATTC’s products creates a factual dispute.

The parties’ dispute raises a question of claim

construction, requiring the court to determine the meaning of the

inlet of the exit orifice as used in the ‘923 patent. As is

explained above, claim construction is a legal question, not a

factual issue. Therefore, the experts’ disagreement does not

preclude summary judgment. Once again, the parties did not raise

an issue of claim construction for “inlet” in the course of the

claim construction portion of this case.

The specification of the ‘923 patent explains that a plasma

arc torch includes an electrode and a nozzle, which is surrounded

by a shield. The shield “is secured in a spaced relationship

relative to the nozzle in the torch body and defines a shield

exit orifice.” Col. 3, ll. 21-23. The torch operates with a

pressurized gas flow. A portion of the gas passes through vents

into the area between the nozzle and the shield, passes through

the space between the nozzle and the shield body, and exits

through the shield exit orifice. 

Claim 8 of the ‘923 patent pertains to a torch tip with a

nozzle and a shield, composed of a body portion and a head

portion that defines an exit orifice dimensioned so that the

nozzle head extends to a position between the inlet and the

Case 1:05-cv-00373-JD Document 480 Filed 02/03/09 Page 31 of 36
32

outlet of the shield exit orifice. The dependant claims

following Claim 8, Claims 9 through 12, add certain shape and

size limitations. Claim 13 pertains to a shield with a generally

cylindrically shaped upper body, a substantially conically shaped

lower body portion, and a shield head portion, that defines the

exit orifice, with an inlet and an outlet, and dimensioned so

that the nozzle head portion can extend to a position between the

inlet and the outlet. Its dependent claims, Claims 14 through

16, add shape and size limitations. In both claims, the nozzle

extends beyond the inlet of the exit orifice but not as far as

the outlet and instead is “recessed within the shield head

portion relative to said outlet of said shield exit orifice to

prevent a substantial portion of splattered molten metal produced

during marking or cutting of the workpiece from reaching the

nozzle.” Col. 6, ll. 53-58. 

Based on the language of the claims themselves, and the

specification, the exit orifice is defined by the head portion of

the shield. The shield head provides the structure around the

inlet and outlet of the exit orifice, which is space. As shown

in figures 2 and 3, the inlet is the beginning of the exit

orifice and the outlet is the end, and the inlet is located at

the beginning of the head portion of the shield. Although the

dependent claims add other limitations to the head portion and

Case 1:05-cv-00373-JD Document 480 Filed 02/03/09 Page 32 of 36
13ATTC asserted, based on the figures shown in the ‘923

patent, and perhaps echoing the language used by Hypertherm’s

expert, Reed, that the “inlet” was located at the point at which

the shield head was parallel to the central axis of the exit

orifice. Reed stated in his report that the inlet was 

[t]he point at which the shield body cavity surface (1) changes

direction to a substantial/significant degree toward a direction

more parallel with the central axis . . . .” To support that

opinion, Reed stated: “An orifice, in an engineering context,

begins where the hollow body’s inner surface

substantially/significantly changes profile or contour direction

to a substantial degree toward a direction more parallel to the

orifice’s central axis . . . .” Report at 62, 63. Expert

opinions, however, are extrinsic evidence for purposes of claim

construction that cannot be used to overcome the intrinsic

evidence. Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323,

1328 (Fed. Cir. 2008).

33

exit orifice, including a limitation that the head portion is

generally cylindrical, those limitations are not part of the

independent claims. In the absence of any contrary evidence, the

cylindrical shield head portion claimed in dependent Claims 10

and 14 and illustrated in figures 2 and 3 cannot be used to

construe the term “inlet,” as used in the independent claims, to

require the inlet to be parallel to the central axis of the

orifice.13 See Regents of the Univ. of Calif. v. Dakocytomation

Calif., Inc., 517 F.3d 1364, 1375 (Fed. Cir. 2008) (discussing

claim differentiation); Phillips v. AWH Corp., 415 F.3d 1303,

1315 (Fed. Cir. 2005) (“[T]he presence of a dependent claim that

adds a particular limitation gives rise to a presumption that the

limitation in question is not present in the independent

Case 1:05-cv-00373-JD Document 480 Filed 02/03/09 Page 33 of 36
34

claim.”). Therefore, the inlet of the shield exit orifice is the

space at the top or beginning of the exit orifice as defined by

the shield head portion.

ATTC based its theory of no infringement on a different

construction of “inlet.” Therefore, ATTC has not shown that it

is entitled to summary judgment of no infringement as a matter of

law.

B. Doctrine of Equivalents

ATTC argues that Hypertherm is barred from claiming

infringement under the doctrine of equivalents because the patent

was originally rejected based on other patents that claimed torch

tips which produced a substantially columnar gas flow and

Hypertherm then amended its patent to require the nozzle to be

recessed to avoid splatter. ATTC argues that its nozzles are

recessed further than the ‘923 patent requires. 

Hypertherm, however, does not claim equivalence based on the

recess location of the nozzle. Therefore, ATTC’s argument is

unavailing.

ATTC also contends that its products are not equivalent to

the ‘923 patent. This argument was buried in a section of its

motion titled: “Hypertherm Cannot Claim Doctrine of Equivalents

Because It Is Estopped from Doing So By the Prosecution History

Case 1:05-cv-00373-JD Document 480 Filed 02/03/09 Page 34 of 36
35

of the ‘923 Patent.” ATTC provided no facts in its factual

statement to support its argument that its products are not

equivalent to the ‘923 patent. Not surprisingly, Hypertherm did

not address the issue of equivalence on the merits. 

The court will not consider an argument that was not

properly presented in the motion and accompanying memorandum.

Conclusion

For the foregoing reasons, the pending motions are resolved,

as is more fully explained in the order, as follows:

1. Hypertherm’s motion for summary judgment (document no.

171) is granted in part and denied in part.

 To the extent that matters raised in the motion were

resolved by prior orders, those matters were not considered and

remain as previously decided. 

The motion is denied as to infringement of Claim 7 of the

‘255 patent and Claim 12 of the ‘617 patent by the listed accused

parts. 

The motion is granted as to infringement of Claim 1 of the

‘988 patent by the listed accused products. 

Hypertherm’s infringement claims as to formerly accused

products listed in Exhibit 5 to its objection (Document no. 235)

are dismissed. Exhibit 5 is appended to this order.

Case 1:05-cv-00373-JD Document 480 Filed 02/03/09 Page 35 of 36
36

2. ATTC’s motion for summary judgment (document no. 201) is

denied. 

3. ATTC’s motion for summary judgment (document no. 203) is

granted to the extent that its three listed parts do not infringe

Claims 11 and 12 of the ‘988 patent and is otherwise denied. 

4. ATTC’s motion for summary judgment (document no. 199) is

denied.

SO ORDERED.

____________________________

Joseph A. DiClerico, Jr.

United States District Judge

February 3, 2009

Appendix

cc: Jill C. Anderson, Esquire

Jacob K. Baron, Esquire

Steven M. Bauer, Esquire

Lucas M. Blower, Esquire

Colin G. Cabral, Esquire

Seth M. Cannon, Esquire

Joseph A. Capraro, Jr., Esquire

Christopher J. Carney, Esquire

Jeffery M. Cross, Esquire

Joseph T. Dattilo, Esquire

Maia H. Harris, Esquire

Marc H. Kallish, Esquire

Rhett R. Krulla, Esquire

Jonathan A. Lax, Esquire

Edward F. McCormack, Esquire

Richard C. Nelson, Esquire

W. Scott O'Connell, Esquire

Jeremy P. Oczek, Esquire

Richard D. Rochford, Jr., Esquire

David W. Ruoff, Esquire

John T. Shapiro, Esquire

John M. Skeriotis, Esquire

Benjamin M. Stern, Esquire

Wayne Tang, Esquire

Case 1:05-cv-00373-JD Document 480 Filed 02/03/09 Page 36 of 36