Maryland Intellectual Property Lawyer & Attorney : Brian Wm. Higgins : Serving Baltimore, Columbia, Frederick

“ A court may not prohibit or restrict the citation of federal judicial opinions, orders, judgments, or other written dispositions that have been: (i) designated as “unpublished,” “not for publication,” “non-precedential,” “not precedent,” or the like; and (ii) issued on or after January 1, 2007.”

     Paul Mark Sandler opined earlier this year in Raising the Bar: "Citing Unpublished Opinions,” The Daily Record, May 4, 2007, that:

“The new rule [32.1] will bring a measure of uniformity to the federal courts of appeals. Although federal circuit courts will still be able to give varying precedential weight to unpublished opinions, they can no longer prohibit lawyers from citing them. Thus, Rule 32.1 will effectively overturn local appellate rules in the Second, Seventh, Ninth, and Federal Circuits, where the citation of unpublished opinions is currently banned outright.”

     Paul’s comment is correct: courts will give varying precedential weight to unpublished opinions, even though under Rule 32.1 they won’t be able to outright ban them in, for example, the Fourth Circuit and Federal Circuit (which handles all patent appeals). Thus, while Rule 32.1 apparently removes the bar to citation to unpublished opinions, it does nothing to lessen what amounts to a stigma associated with those opinions, especially in the court that issued the opinions. The result of the "not available for publication" designation in this case is that lawyers will be reluctant to cite to the memorandum opinion to support their arguments in other cases.

     Issuing the Contech opinion as “not approved for publication” does not make sense. The opinion contains a detailed claim construction that, in one instance, is diametrically opposed to another district court’s claim construction (i.e., the District Court for the District of Oregon) regarding the term “siphoning,” which leaves one of the two patents-in-suit in the Contech case in a state of flux. That patent, described below, was issued in 1998 and has already seen litigation twice. It’s possible that it will see the inside of more courtrooms before the patent expires, so providing a precedential opinion today, which others can rely upon without hesitation, just makes sense.

The Lawsuit

     The lawsuit began in February 2007 when West Chester, OH-based Contech Stormwater Solutions sued Mount Airy, MD-based BaySaver Technologies, Inc. and AccuBid Excavation, Inc. for allegedly infringing its U.S. Patents Nos. 5,707,527 and 6,027,639, which are directed to an “Apparatus and Method for Treating Stormwater” and a “Self-Cleaning Siphon-Actuated Radial Flow Filter Basket,” respectively. At the summary judgment stage, the Maryland District Court granted defendants’ motion for summary judgment, finding that BaySaver Technologies’ BaySaver™ stormwater filtration units do not infringe the two patents. In doing so, the court refused to adopt the Oregon District Court’s construction of the term “siphoning,” choosing instead to adopt its own construction of the term.  

     In particular, the court construed the term “siphoning” in the clause “siphoning treated water from the drainage space under gravity into the treated water outlet conduit” according to the patentee’s chosen definition:  “[the specification] makes it clear that the patentee is defining ‘siphoning’ to describe a process by which water is emptied from a drainage space by traveling through a tube or pipe running from the liquid in the drainage space to a lower level outside the vessel so that atmospheric pressure forces the liquid through the tube.” That interpretation of the disclosure is contrary to the ordinary meaning of the term as understood by one skilled in the art, the court acknowledged, since it excludes the flow of water over an intermediate elevation. The BaySaver device, the court found, “does create a true siphon effect as the term is ordinarily understood by those skilled in the art.”

     The Oregon court had come to a different construction in Stormwater Management, Inc v. Cds Technologies, Inc., No. 3:04 Civ 414 (D. Ore. 2004):

“[O]ne of ordinary skill in the art of hydraulics would understand ‘siphoning’ to mean ‘a closed conduit that rises above the hydraulic grade line and in which the pressure at some point is below atmospheric.’ Standard Handbook for Civil Engineers (3d ed.). The ['527] patent does not expressly redefine the term "siphoning," nor does the patent redefine that term by implication by using the term 'throughout the entire patent specification, in a manner consistent with only a single meaning.' Bell Atl. Network Servs., Inc. v. Covad Communications Group, Inc., 262 F.3d 1258, 1271 (Fed. Cir. 2001). Rather, the patent's use of the term 'siphoning' is consistent with that term's ordinary meaning as understood by one of ordinary skill in the art. Accordingly, the court finds 'siphoning,' as used in the '527 patent, means: 'a closed conduit that rises above the hydraulic grade line and in which the pressure at some point is below atmospheric.' Ordered by Judge Michael W. Mosman. (dls, ) (Entered: 05/11/2005).”

     In reviewing the Oregon District Court opinion, the Maryland District Court stated “because the ‘527 patent specification and preferred embodiment do not teach of an induced hydraulic flow over an intermediate elevation, and would thus be excluded by such a definition, it would be improper to adopt this construction of the term ‘siphoning.’”

Comments:

• The other patent-at-issue was also found not to be infringed by the BaySaver device
  
  
• The Oregon case settled after summary judgment briefs were filed and served, so the Oregon court's claim construction was apparently never appealed to the Federal Circuit
  
  
• In a statement on its website, Baysaver’s President stated confidently, “This is a real victory for the environment, our customers and everyone else in this industry because BayFilter offers superior performance and a better value. Our customers now have a choice – they don’t have to buy filters from Contech”.
  
• Patent cases are of course regularly appealed to the Federal Circuit, which reviews claim construction opinions at summary judgment without deference (or plenary review) and, therefore, would not necessarily care whether a district court’s claim construction is "published" or not; however, if this case is not appealed, other cases (and other lawyers) could be reluctant to rely on the Contech opinion given its current unpublished status.