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In a patent war, sometimes the most important battle comes before the trial when the judge makes his Markman rulings to decide issues of claim construction. In Design By Us Co. v. Best Foods Inc. and Sherri Cup Inc. , Pennsylvania U.S. District Judge Ronald L. Buckwalter was forced to define a key term in the patent for an item that has become ubiquitous in recent years. As Buckwalter described it, “the patent, in simple terms, is for an external wrap of corrugated paper that is placed over a standard paper cup so that, if the cup contains hot beverages or food items, it can comfortably be held despite the hot contents.” Claim No. 10 of the invention describes: “an insulating beverage container, comprising a cellulosil corrugated tubular member consisting essentially of recyclable material, said container including a first opening and an internal cavity for containing a hot or cold medium, said container including fluting means adhesively attached with a ‘recyclable adhesive’ to a liner for containing insulated air.” Plaintiff’s attorneys Manny D. Pokotilow, Martin L. Fagus and Mona Gupta of Philadelphia firm Caesar, Revise, Bernstein, Cohen & Pokotilow argued that the term “recyclable adhesive” means “an adhesive that does not interfere with recycling paper.” But Philadelphia defense attorneys William T. Hangley and Peter H. LeVan Jr. of Hangley Aronchick Segal & Pudlin, along with Martin G. Belisario of Akin Gump Strauss Hauer & Feld, insisted that the term means “an adhesive that, after use, can be recovered, processed and reused in some form as an adhesive.” The defense listed four reasons why its definition should be adopted: • The term “recycle” has a commonly understood meaning, supported by definitions contained in ordinary dictionaries, trade literature and statute law, which requires both collection and reuse of the product at issue. • Nothing in the patent claims, specification or prosecution history indicates that the patentee, in using the term “recyclable,” intended to give some unique or novel meaning to the term “recyclable adhesive.” Instead, the prosecution history shows that Design By Us was embracing the ordinary meaning, rather than some novel meaning. • Both the inventor and the prosecuting attorney testified that they did not have (or could not recall) any novel definition of “recyclable adhesive” in mind when they filed and prosecuted the patent application./L/M • DBU’s expert himself admitted that the definition a paper recycler might give to the term “recyclable adhesive” is irrelevant to a patent in the field of paper-cup manufacturing; that he lacks any pertinent expertise; and, even in his narrow area of non-pertinent expertise, that his proffered definition is an inaccurate one. But the plaintiff’s team also had four arguments to make: • Extrinsic evidence must be used to interpret “recyclable adhesive” because the term is not defined by the claims, specification or prosecution history. • The Dictionary of Paper supports the ordinary meaning of “recyclable adhesive” understood by one skilled in the art that the adhesive does not interfere with recycling paper. • The experts agree that in the paper-recycling industry, a “recyclable adhesive” is one that does not interfere with recycling paper. • The plaintiff’s definition upholds the validity of the claims in the patent, and claims should be construed to sustain their validity. Judge Buckwalter, in a five-page memorandum and order, sided with the plaintiff. “Because on balance, I feel that plaintiff’s arguments are more persuasive both legally and logically, I find that ‘recyclable adhesive’ as used in the … patent means an adhesive that does not interfere with recycling paper. To find otherwise is to suggest that the adhesive would likely be recovered, collected, processed or reused by a recycler, a result that defendants’ own witness decries.” Rejecting the defense argument that the word “recycle” has a commonly understood meaning, Buckwalter said “those meanings do not necessarily attach to the word ‘recyclable,’ the connotation of which certainly includes a product or substance that does not impede the recyclability of another product to which it may be attached or applied.” In the patent at issue, Buckwalter said, “the adhesive material is applied between the fluting material and the liner board. The adhesive is not stripped from the corrugated paper product prior to the recycling because it does not interfere with recycling the paper product.” As for the defense’s third reason, Buckwalter said “it seems that neither the inventor nor the prosecuting attorney had, what I would characterize as, a fixed definition of the term in question. That is, both sides can point to deposition testimony favoring its position. Thus, I find defendants’ argument in this regard to be unpersuasive.” But “most important” to Buckwalter’s analysis was his decision that the testimony of the plaintiff’s expert was not irrelevant. T.F. Ling, a research scientist who holds a doctorate in chemical engineering, testified that “when we say adhesive is recyclable, basically the adhesive has to be repulpable or dispersable during pulping.” Buckwalter agreed, saying “in the context of what this patent is all about — the external wrap over a paper cup — the definition plaintiff urges upon us is the one with which I agree.” Buckwalter noted that the dispute over the definition of recyclable adhesive was the only claims construction issue he needed to decide under Markman v. Westview Instruments Inc.

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