
735 F.Supp.2d 535 (2010)
US FOAM, INC., et al., Plaintiffs,
v.
ON SITE GAS SYSTEMS, INC., Defendant.
On Site Gas Systems, Inc., Plaintiff,
v.
USF Technologies, Inc., et al., Defendants.
USF Equipment and Services, Ltd., et al., Plaintiffs,
v.
Allied International Emergency, LLC., et al., Defendants.
US Foam, Inc., et al., Plaintiffs,
v.
Cummins Industries, Inc., et al., Defendants.
Civil Action Nos. 2-07-cv-466-TJW, 6:08-cv-231-LED, 2-07-cv-490-TJW, 2-07-cv-491-TJW-CE.
United States District Court, E.D. Texas, Marshall Division.
August 3, 2010.
*539 Daymon Jeffrey Rambin, Jessica Lea Hannah, Sidney Calvin Capshaw, III, Capshaw Derieux, LLP, Longview, TX, Michael J. Rye, Cantor Colburn LLP, Craig A. Raabe, Nuala E. Droney, Robinson & Cole, Hartford, CT, Samuel Franklin Baxter, McKool Smith, Marshall, TX, James Randolph Michels, Stites & Harbison, *540 PLLC, Nashville, TN, Joel Thomas Beres, Robert Chung-Hua Yang, William Charles Ferrell, Jr., Stites & Harbison, Louisville, KY, Mara Jill Bindler, McKool Smith, Dallas, TX, for Plaintiffs.
Richard L. Schwartz, Whitaker Chalk Swindle & Sawyer, Fort Worth, TX, Charles F. O'Brien, Cantor Colburn LLP, Hartford, CT, Elizabeth L. Derieux, Capshaw Derieux, LLP, Longview, TX, for Plaintiffs/Defendants.
D. Scott Hemingway, Hemingway & Hansen LLP, Dallas, TX, for Defendants.

MEMORANDUM OPINION AND ORDER
T. JOHN WARD, District Judge.
The Court held a Markman hearing on June 2, 2010. After considering the submissions and the arguments of counsel, the Court issues the following order regarding claim construction:

I. Introduction
Four cases have a consolidated Markman hearing involving three patents. In three cases, U.S. Foam, Inc., USF Equipment Services, LTD., and Alden Ozment (collectively "US Foam") have asserted U.S. Patents No. 7,096,965 ("the '965 patent") and 7,104,336 ("the '336 patent") against various defendants.[1] In the fourth case, On Site asserts U.S. Patent No. 6,988,558 ("the '558 patent") against U.S. Foam. The following chart identifies the parties and patents:


                        Asserted        Cause
Plaintiff   Defendant   Patent(s)       Number
                        '965 and '336
US Foam     Allied      patents         2:07-cv-490
                        '965 and '336
US Foam     Cummins     patents         2:07-cv-491
                        '965 and '336
US Foam     On Site     patents         2:07-cv-466
On Site     US Foam     '558 patent     6:08-cv-231


II. Background of the Technology

A. The '965 and '336 patents
The '965 patent is entitled "Method and Apparatus for Fighting Fires in Confined Areas." The '965 patent was filed on July 16, 2003 and issued on August 29, 2006 to Alden Ozment. The technology described in the '965 patent relates generally to introducing nitrogen to a mixture of foam concentrate and liquid, thereby creating a fire suppressant foam. Applying this "nitrogen expanded foam" to a fire in a confined space smothers the fire. The invention specifies nitrogen as the preferable gas to aerate the foam because oxygen encourages combustion. The '965 patent includes a foam dispenser that further expands the nitrogen-aerated foam and allows fire fighters to use it from a safe distance.
The '336 patent is a continuation-in-part of the'965 patent. The '336 patent discloses additional features, such as using chilled nitrogen and implementing the invention in a self-contained unit.

B. The '558 patent
The '558 patent was filed on February 1, 2001 and issued on January 24, 2006, relates to a method of extinguishing a fire by injecting gas onto the fire using a foam powder or water. The gases disclosed include argon, nitrogen, and carbon dioxide. The '588 patent is not targeted to coal mines and focuses on the composition of the gas. The patent describes using synthetic chemicals to create foam filled with fire-extinguishing gas.

III. General Principles Governing Claim Construction
"A claim in a patent provides the metes and bounds of the right which the *541 patent confers on the patentee to exclude others from making, using or selling the protected invention." Burke, Inc. v. Bruno Indep. Living Aids, Inc., 183 F.3d 1334, 1340 (Fed.Cir.1999). Claim construction is an issue of law for the court to decide. Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed.Cir.1995) (en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996).
To ascertain the meaning of claims, the court looks to three primary sources: the claims, the specification, and the prosecution history. Markman, 52 F.3d at 979. Under the patent law, the specification must contain a written description of the invention that enables one of ordinary skill in the art to make and use the invention. A patent's claims must be read in view of the specification, of which they are a part. Id. For claim construction purposes, the description may act as a sort of dictionary, which explains the invention and may define terms used in the claims. Id. "One purpose for examining the specification is to determine if the patentee has limited the scope of the claims." Watts v. XL Sys., Inc., 232 F.3d 877, 882 (Fed.Cir.2000).
Nonetheless, it is the function of the claims, not the specification, to set forth the limits of the patentee's claims. Otherwise, there would be no need for claims. SRI Int'l v. Matsushita Elec. Corp., 775 F.2d 1107, 1121 (Fed.Cir.1985) (en banc). The patentee is free to be his own lexicographer, but any special definition given to a word must be clearly set forth in the specification. Intellicall, Inc. v. Phonometrics, 952 F.2d 1384, 1388 (Fed. Cir.1992). And, although the specification may indicate that certain embodiments are preferred, particular embodiments appearing in the specification will not be read into the claims when the claim language is broader than the embodiments. Electro Med. Sys., S.A. v. Cooper Life Sciences, Inc., 34 F.3d 1048, 1054 (Fed.Cir.1994).
This court's claim construction decision must be informed by the Federal Circuit's decision in Phillips v. AWH Corporation, 415 F.3d 1303 (Fed.Cir.2005) (en banc). In Phillips, the court set forth several guideposts that courts should follow when construing claims. In particular, the court reiterated that "the claims of a patent define the invention to which the patentee is entitled the right to exclude." 415 F.3d at 1312 (emphasis added) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1115 (Fed.Cir.2004)). To that end, the words used in a claim are generally given their ordinary and customary meaning. Id. The ordinary and customary meaning of a claim term "is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application." Id. at 1313. This principle of patent law flows naturally from the recognition that inventors are usually persons who are skilled in the field of the invention. The patent is addressed to and intended to be read by others skilled in the particular art. Id.
The primacy of claim terms notwithstanding, Phillips made clear that "the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification." Id. Although the claims themselves may provide guidance as to the meaning of particular terms, those terms are part of "a fully integrated written instrument." Id. at 1315 (quoting Markman, 52 F.3d at 978). Thus, the Phillips court emphasized the specification as being the primary basis for construing the claims. Id. at 1314-17. As the Supreme *542 Court stated long ago, "in case of doubt or ambiguity it is proper in all cases to refer back to the descriptive portions of the specification to aid in solving the doubt or in ascertaining the true intent and meaning of the language employed in the claims." Bates v. Coe, 98 U.S. 31, 38, 25 L.Ed. 68 (1878). In addressing the role of the specification, the Phillips court quoted with approval its earlier observations from Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed.Cir.1998):
Ultimately, the interpretation to be given a term can only be determined and confirmed with a full understanding of what the inventors actually invented and intended to envelop with the claim. The construction that stays true to the claim language and most naturally aligns with the patent's description of the invention will be, in the end, the correct construction.
Consequently, Phillips emphasized the important role the specification plays in the claim construction process.
The prosecution history also continues to play an important role in claim interpretation. The prosecution history helps to demonstrate how the inventor and the PTO understood the patent. Phillips, 415 F.3d at 1317. Because the file history, however, "represents an ongoing negotiation between the PTO and the applicant," it may lack the clarity of the specification and thus be less useful in claim construction proceedings. Id. Nevertheless, the prosecution history is intrinsic evidence. That evidence is relevant to the determination of how the inventor understood the invention and whether the inventor limited the invention during prosecution by narrowing the scope of the claims.
Phillips rejected any claim construction approach that sacrificed the intrinsic record in favor of extrinsic evidence, such as dictionary definitions or expert testimony. The en banc court condemned the suggestion made by Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed.Cir. 2002), that a court should discern the ordinary meaning of the claim terms (through dictionaries or otherwise) before resorting to the specification for certain limited purposes. Id. at 1319-24. The approach suggested by Texas Digitalthe assignment of a limited role to the specificationwas rejected as inconsistent with decisions holding the specification to be the best guide to the meaning of a disputed term. Id. at 1320-21. According to Phillips, reliance on dictionary definitions at the expense of the specification had the effect of "focus[ing] the inquiry on the abstract meaning of words rather than on the meaning of the claim terms within the context of the patent." Id. at 1321. Phillips emphasized that the patent system is based on the proposition that the claims cover only the invented subject matter. Id. What is described in the claims flows from the statutory requirement imposed on the patentee to describe and particularly claim what he or she has invented. Id. The definitions found in dictionaries, however, often flow from the editors' objective of assembling all of the possible definitions for a word. Id. at 1321-22.
Phillips does not preclude all uses of dictionaries in claim construction proceedings. Instead, the court assigned dictionaries a role subordinate to the intrinsic record. In doing so, the court emphasized that claim construction issues are not resolved by any magic formula. The court did not impose any particular sequence of steps for a court to follow when it considers disputed claim language. Id. at 1323-25. Rather, Phillips held that a court must attach the appropriate weight to the intrinsic sources offered in support of a proposed claim construction, bearing in *543 mind the general rule that the claims measure the scope of the patent grant.

IV. Agreed Terms

A. The `336 and `965 patents
The Court adopts the following constructions, as agreed to by the parties:


-------------------------------------------------------------------------------------------
Disputed term                                                   Construction
about 0.1% to about 1.0%                           A range that includes concentrations
                                                   about 0.1% by
Patent `965 Claim 6                                volume to about 1.0% by
                                                   volume.
-------------------------------------------------------------------------------------------
About                                              approximately
Patent `336 Claims 1, 4, 5,
6, 7, 10, 11, 12
Patent `965 Claims 3, 6
-------------------------------------------------------------------------------------------
admixture                                          the act of mixing
Patent `336 Claim 3
-------------------------------------------------------------------------------------------
chilled nitrogen                                   nitrogen that has had its
                                                   temperature lowered
Patent `336 Claim 1
-------------------------------------------------------------------------------------------
chilled                                            lowered in temperature
Patent `336 Claims 6, 7
-------------------------------------------------------------------------------------------
chilled essentially                                chilled at almost the same
simultaneously                                     time or at the same time
Patent `336 Claim 2
-------------------------------------------------------------------------------------------
chilling                                           lowering the temperature
Patent `336 Claim 1
-------------------------------------------------------------------------------------------
dispensed                                         discharged
Patent `336 Claims 4, 5, 10,
12
Patent `965 Claims 1, 9, 11,
13
-------------------------------------------------------------------------------------------
dispensing                                         discharging
Patent `336 Claims 1, 8
Patent `965 Claim 4
-------------------------------------------------------------------------------------------
drawing out                                        to remove
Patent `965 Claim 10
-------------------------------------------------------------------------------------------
flowing stream                                     a fluid or liquid that is
                                                   moving
Patent `336 Claims 1, 9
Patent `965 Claim 4
-------------------------------------------------------------------------------------------
flowing stream                                     a fluid or liquid that is flowing
Patent `336 Claims 1, 9
Patent `965 Claim 4
-------------------------------------------------------------------------------------------
ingress point                                      an entrance
Patent `965 Claim 1
-------------------------------------------------------------------------------------------
introduction of nitrogen                           allowing nitrogen to be added
Patent `336 Claim 9
-------------------------------------------------------------------------------------------
providing at least one                             providing at least one
ingress point                                      entrance.
Patent `965 Claim 9
-------------------------------------------------------------------------------------------
Ratio of about                                     proportion of approximately
Patent `965 Claim 3
-------------------------------------------------------------------------------------------
stream                                             a fluid or liquid that is moving
Patent `336 Claim 1
Patent `965 Claims 1, 2, 3,
4, 9, 11
-------------------------------------------------------------------------------------------


B. The `558 patent
The parties have not agreed to the constructions of any of the terms in the `558 patent.

V. Disputed Terms

A. The `336 and `965 patents

1. "fire"-related terms


---------------------------------------------------------------------------------------------
Disputed term                   US Foam                              Defendants
---------------------------------------------------------------------------------------------
[area] in-volved       area that is on fire                          the [portion of
in fire                                                              the mine/sealed
                                                                     portion of the
Patent `336                                                          mine/portion of
Claim 1, 8                                                           the coal mine] that
Patent `965                                                          is burning, which
Claim 1, 2, 9,                                                       is shown by bore-hole
10,13                                                                temperatures
                                                                     of 90° F or greater
---------------------------------------------------------------------------------------------
areas of the           portions of the                               the portion of the
confined area          confined area that                            mine outside the
that are free          are not on fire                               sealed area that is
of fire                                                              not burning, which
                                                                     is shown by bore-hole
Patent `336                                                          temperatures
Claim 8                                                              of less than 90° F
---------------------------------------------------------------------------------------------
coal mine fire         burning of com-bustible                       the burning of
                       material                                      combustible material,
Patent `336            in a coal mine                                as shown in a
Claim 8                                                              coal mine fire by
                                                                     borehole temperatures
                                                                     of 90° F or
                                                                     greater
---------------------------------------------------------------------------------------------
fire                   burning of com-bustible                       the burning of
                       material                                      combustible material,
Patent `336,                                                         as shown in a
Claims 1, 8                                                          coal mine fire by
Patent `965                                                          borehole temperature



*544
Claim 1, 4, 8                                                        of 90° F or
                                                                     greater
---------------------------------------------------------------------------------------------
uninvolved             areas of the mine                             the portion of the
areas of said          shaft that are not                            mine that is not
mine shaft             on fire                                       burning, which is
                                                                     shown by borehole
Patent `965                                                          temperatures of
Claim 9                                                              less than 90° F
---------------------------------------------------------------------------------------------

The parties agree that a "fire" is "the burning of combustible material." Defendants attempt to add an additional limitation that a fire, as used in the claims, is also to be defined by a borehole temperature reading of greater than 90 degrees Fahrenheit. Defendants find their 90-degree limitation from the specification's repeated statements that a fire is considered to be extinguished when the surface temperature is reduced to 90 degrees or below. See `336 patent, 5:52-57; 6:30-35; 9:42-46; 10:53-59; 9:65-10:1; 11:1-4. While that may be true, it tells a person of ordinary skill in the art what it means to extinguish a fire, not what it means for there to be a fire. For example, if a borehole temperature read 95 degrees, but there has never been any burning of combustible material, according to Defendants' proposal, the temperature reading alone would indicate that there was a fire even in the absence of burning. Common sense tells the Court that Defendant's proposed limitation cannot be part of the correct construction. The Court construes "fire" to mean "burning of combustible material."
The Court further adopts the following fire-related constructions.


---------------------------------------------------------------------------------
[area] involved in fire                area in which there is burning
                                       of combustible material
---------------------------------------------------------------------------------
areas of the confined area             portions of the confined
that are free of fire                  area in which there is an
                                       absence of the burning of
                                       combustible material
---------------------------------------------------------------------------------
coal mine fire                         burning of combustible
                                       material in a coal mine
---------------------------------------------------------------------------------
uninvolved areas of said               areas of the mine shaft in
mine shaft                             which there is no burning
                                       of combustible material
---------------------------------------------------------------------------------


2. "extinguish"-related terms


----------------------------------------------------------------------------------
Disputed term               US Foam                        Defendants
----------------------------------------------------------------------------------
extinguishing          If construed to be             to cause the fire to
a fire                 limiting then,                 stop burning completely,
                       "ceasing the burning           as shown
Patent `336            of a fire, in                  in a coal mine fire
Claim 1                whole or in part"              by reducing the
Patent `965                                           borehole temperatures
Claims 1, 4, 9                                        of less than
                                                      90° F
----------------------------------------------------------------------------------
fighting a coal        attempting to to               cause the burning
mine fire              cease the burning              to stop completely,
                       of a coal mine fire,           as shown
Patent `336            in whole or in part            in a coal mine fire
Claim 8                                               by reducing the
                                                      borehole temperatures
                                                      to less than
                                                      90° F
----------------------------------------------------------------------------------
initiate suppression   to begin to cease              to begin the process
of                     the burning of a               of stopping
the fire               fire                           the fire from
                                                      burning
Patent `336
Claim 8
----------------------------------------------------------------------------------

The parties have three main disputes with respect to the "extinguish" terms. First, they dispute whether the preambles containing the word "extinguish" are limiting. Second, they dispute whether extinguishment requires complete cessation of burning, or only partial cessation. Third, the parties dispute whether the surface temperature must be reduced to 90 degrees in order for a mine fire to be extinguished.
"In general, a preamble limits the invention if it recites essential structure or steps, or if it is necessary to give life, meaning, and vitality to the claim. . . . A preamble is not limiting where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention." Vizio, Inc. v. Int'l Trade Com'n, 605 F.3d 1330, 1340 (Fed.Cir.2010) (internal citations and quotations omitted). In dispute are the preambles of claims 1, 4, and 9 of the `965 patent, and claim 1 of the `336 patent. The `965 patent, claims *545 1, 4, and 9 all recite essential structure in the preamble. In claims 1 and 9, the preamble recites "mine shaft," which reappears in the first step as "said mine shaft." Likewise, in Claim 4 of the `965 patent, the preamble recites "poorly ventilated area," which provides the antecedent basis for "said poorly ventilated area" in the last step of the method. Moreover, the phrase "extinguishing a fire" is "the essence or fundamental characteristic" of the inventions. See id. at 1341 (finding that "decoding" as used in the preamble "was properly construed as a claim limitation. . . because [the term] is the essence or a fundamental characteristic of the claimed invention"). The Court will construe the preambles.
The next issue for the Court to resolve is whether "extinguishing a fire" requires complete extinguishment, as Defendants contend. Defendants rely on statements in the prosecution history, arguing that the patentee overcame a prior art reference in which "a mine cavity could [not] be completely filled to smother hot spots on the sides and top portions of [a mine] shaft." Amendment, Sept. 1, 2005. This language does not support Defendants' argument. The language merely shows that the invention provided a superior manner of covering and smothering a fire, not that the fire needs to be extinguished completely. Nonetheless, the Court finds support in the specification for Defendant's position. Explaining the problems associated with confined areas, the specification recites, "providing additional combustible material to feed the fire. . . make[s] extinguishing of such a fire, other than letting the fire burn itself out, even more difficult if not impossible." `965 patent, 3:1-3. If a fire need only partially cease burning to be extinguished, "letting the fire burn itself out" is an excessively limited view of available options in the absence of a seal to keep air out of the burning area. A partially extinguished fire that has been allowed to "burn itself out" will refuel if the confined area is opened to permit miners to reenter. Moreover, the quote from the "Mine Fires" book also indicates that extinguishment, as understood by the patentee, must be complete. "[H]igh expansion foams have not yet extinguished a real mine fire." `965 patent, 4:11-12. Certainly some foams had been able to cease at least some burning, i.e., "extinguish" according to U.S. Foam. Upon reading this sentence, one of ordinary skill in the art would understand the invention to be directed toward complete extinguishment, or ceasing the burning of combustible materials in whole. The Court declines to include "in whole or in part" as part of the construction for any of the "extinguish" related terms.
Finally, with respect to the 90-degree limitation, Defendants argue that a fire is only extinguished when the surface temperature is reduced to 90 degrees or lower. Defendants rely on the patentee's pervasive statements throughout the `336 patent that "90 degrees Fahrenheit is the temperature that is accepted as the point at which the fire is considered to be extinguished." `336, 5:52-57. See also `336, 6:30-35; 9:42-46; 10:53-59; 9:65-10:1; 11:1-4. The Court must be careful not to import a limitation from the specification, "[b]ut `the line between construing terms and importing limitations can be discerned with reasonable certainty and predictability if the court's focus remains on understanding how a person of ordinary skill in the art would understand the claim terms.'" ICU Medical, Inc. v. Alaris Medical Systems, Inc., 558 F.3d 1368, 1375 (Fed.Cir.2009) (internal quotations omitted). In light of the repeated statements that a fire is extinguished only if it reaches *546 90 degrees, one skilled in the art would understand "extinguished," as claimed in the `336 patent, to require just such a reduction in temperature. See id. See also Chamberlain Group, Inc. v. Lear Corp., 516 F.3d 1331 (Fed.Cir.2008) (finding that the patent restricted "binary code" to a narrower meaning than otherwise understood).
Ordinarily, the same claim term appearing in related patents would carry the same meaning. See Boss Indus., Inc. v. Yamaha Motor Corp., 333 Fed.Appx. 531, 536-37 (Fed.Cir.2009) ("[B]ecause each patent-in-suit is derived from the same parent application and shares many common terms with its sister patents, the district court correctly interpreted [the disputed term] consistently across all of the asserted patents.") (citing NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1293 (Fed.Cir.2005)); Omega Eng'g., Inc. v. Raytek Corp., 334 F.3d 1314, 1334 (Fed. Cir.2003) ("[W]e presume, unless otherwise compelled, that the same claim term in the same patent or related patents carries the same construed meaning."). The `336 patent is a continuation-in-part of the `965 patent and, the specifications have significant differences that are material to the Court's construction of "extinguish." The `965 patent makes no mention whatsoever of any temperature limitations, let alone a 90-degree limitation for extinguishment. Reading the `965 patent independently of the `336 patent, a person of ordinary skill in the art would not understand "extinguish," as used in the `965 patent, to require a reduction in temperature to 90 degrees or below. By defining "extinguish" in the `336 patent, the patentee chose to give the continuation-in-part a narrower scope than its parent. This is a rare case where the same claim term in two related patents does not share the same meaning.
What causes the Court concern, however, is the Defendant's introduction of "borehole temperature readings" to the definition of "extinguish." The term "borehole" never appears in the specification and Defendants resort to extrinsic evidence to support the additional limitation. While Defendants may be correct that coal miners customarily check the temperature at the surface of the mine by reading borehole temperatures, there is no support in the intrinsic record for limiting the manner in which miners measure temperature. The Court construes "extinguishing a fire," as used in the `336 patent, to mean "ceasing the burning of combustible material, as shown by mine surface temperatures of 90 degrees Fahrenheit or less." The Court construes "extinguishing a fire," as used in the `965 patent, to mean "ceasing the burning of combustible material." "Fighting a coal mine fire" means "attempting to extinguish a coal mine fire." "Initiate the suppression of the fire" means "to begin extinguishing the fire."

3. "seal", "confined area" and "poorly ventilated" terms


----------------------------------------------------------------------------
Disputed term               US Foam                      Defendants
----------------------------------------------------------------------------
after it has           after it has been              after utilizing a
been sealed            allowed to be                  fire proof barrier
                       made firmly closed             to confine an area
Patent `965                                           of a coal mine involved
Claim 10                                              in fire
----------------------------------------------------------------------------
confined area          a site in a coal               Interior of a coal
of a coal mine         mine having normally           mine,
                       limited ventilation
Patent `336            and limited
Claim 8                access for extinquishing
                       a fire
----------------------------------------------------------------------------
forming a seal         firmly closing or              creating an air
                       securing                       tight fire-proof
Patent `965                                           barrier to confine
Claim 9                                               an area of the coal
                                                      mine on fire
----------------------------------------------------------------------------
poorly                 An area where the              Any confined area,
ventilated             circulation of fresh           including coal
area                   air is poor.                   mines, storage
                                                      tanks, and the like
Patent `965
Claim 4
----------------------------------------------------------------------------



*547
----------------------------------------------------------------------------
seal                   object that firmly             a fire proof barrier
                       closes or secures              to confine an
Patent `965                                           area of a coal mine
Claim 14                                             involved in fire
----------------------------------------------------------------------------
sealed portion         firmly closed or               the sealed portion
                       secured portion                of the mine that is
Patent `336                                           burning, which is
Claims 8, 10,12                                       shown by borehole
                                                      temperatures of
                                                      90° F or greater
----------------------------------------------------------------------------
sealing of a           allowing a confined            a fire proof barrier
confined area          fined area to be               to confine an
                       firmly closed or               area of a coal mine
Patent `336            secured                        involved in fire
Claim 8
----------------------------------------------------------------------------
sealing                firmly closing or              creating an air
                       securing                       tight fire-proof
Patent `336                                           barrier to confine
Claim 8                                               an area of the coal
                                                      mine on fire
----------------------------------------------------------------------------

The parties dispute whether a "confined area" must be sealed and whether a "seal" must be fire-proof or just firmly closed. The patentee gave an express definition for "confined area" in 15 both patents. `965 patent, 2:63-3:3; `336 patent, 3:57-65. Although both patents do not use identical definitions, they are sufficiently similar for the Court to discern the common meaning. The `965 patent defines "confined area" to mean "an area of combustible material that is located at a site having normally limited ventilation and limited access in which combustion by-products can be confined and can pose a threat to personnel attempting to extinguish a fire at the site as well as providing additional combustible material to feed the fire and make extinguishing of such a fire, other than letting the fire burn itself out, even more difficult if not impossible." `965 patent, 2:63-3:3. The `336 patent simplifies the definition: "a site having normally [limited] ventilation and limited access for extinguishing a fire." `336 patent, 3:57-65.[2] While it may appear at first glance that the Court is choosing between two different explicit definitions, the second definition is merely a simpler clarification of the first. "Confined area" has the same scope in both patents and will be construed consistently. See Omega Eng'g., Inc. v. Raytek Corp., 334 F.3d at 1334. The Court construes "confined area of a coal mine" to mean "a site in a coal mine having normally limited ventilation and limited access for extinguishing a fire."
For the "poorly ventilated area" terms, U.S. Foam applies dictionary definitions to create its proposal whereas Defendants propose construing "poorly ventilated area" to be the same as "confined area." A confined area, as defined in the specification, has two characteristicslimited ventilation and limited access. There is no support for requiring that a poorly ventilated area have limited access. US Foam introduces a "fresh air" requirement, though it appears in one of several possible definitions for "ventilate," has no support in the claims or specification. See WEBSTER'S THIRD NEW INTERNATIONAL DICTIONARY OF THE ENGLISH LANGUAGE UNABRIDGED (1993) ("to cause fresh air to circulate through and vitiated or contaminated air to be simultaneously withdrawn from"). The Court construes "poorly ventilated area" to mean "an area where the circulation of air is poor."
The parties dispute whether a seal must be fire proof and air tight. In both the `336 and `965 patents, the patentee says that a seal "must be fire proof and provide a suitable opening to permit the dispensing of foam to the area involved in fire." `965 patent, 3:38-41; `336, 4:58-61. Moreover, as used in the claims, if a seal were not fireproof, then there would be no way to keep an "uninvolved area" of a mine shaft free from fire. See `965 patent, *548 claim 9 ("forming a seal between an area of said mine shaft involved in fire and uninvolved areas of said mine shaft"). Both the specification and claims support the conclusion that a seal is fire proof.
Defendants also seek to add an air tight limitation, which the Court agrees has support. In Claim 10, the invention adds the step of "drawing out at least a portion of the ambient atmosphere from said area involved in fire after it has been sealed." If the seal had no air tight characteristics, this step could not be completed; whatever air that was drawn out would simply be replaced by air outside of the seal. However, given the irregular surfaces of the walls of a mine, the Court can comfortably conclude that one of ordinary skill in the art would not understand the seal to be perfectly air tight. The Court construes "seal" to mean "a fire proof barrier that is substantially air tight."
The Court further construes the remaining terms involving "seal":


------------------------------------------------------------------------
after it has been sealed                     after it has been closed
                                             with a fire proof barrier
                                             that is substantially air
                                             tight
------------------------------------------------------------------------
forming a seal                               closing with a fire proof
                                             barrier that is substantially
                                             air tight
------------------------------------------------------------------------
sealed portion                               area behind a seal where
                                             the fire is located
------------------------------------------------------------------------
sealing                                      closing with a fire proof
                                             barrier that is substantially
                                             air tight
------------------------------------------------------------------------


4. "diffuser" terms


-----------------------------------------------------------------------------
Disputed term             US Foam                            Defendant
-----------------------------------------------------------------------------
diffuser/dispenser     an apparatus that              a device for mixing
                       allows fluid to be             nitrogen with
apparatus              discharged freely              stream of liquid
                                                      through a screen
Patent `965                                           or small holes, and
Claims 1, 9                                           then injects or
                                                      places the expanded
                                                      foam on a fire
-----------------------------------------------------------------------------
diffuser               an apparatus that              an apparatus that
                       permits substances             allows gas to be
Patent `965            to spread                      added through a
Claims 1,9             freely                         screen or small
                                                      holes
-----------------------------------------------------------------------------

As used in the claims, a diffuser is used to add the nitrogen to the foam concentrate (i.e., "introducing a gas comprising nitrogen under pressure to said stream of foam concentrate/liquid mixture by a diffuser/dispenser apparatus"). The specification explains that "[t]he foam is expanded and dispersed through a diffuser/dispenser apparatus that functions to introduce pressurized nitrogen into the water/foam concentrate stream to expand the foam and to dispense the expanded foam." `965, 4:62-65. The Court construes "diffuser" to mean "an apparatus that introduces pressurized nitrogen into the water/foam concentrate stream to expand the foam." The Court construes "diffuser/dispenser apparatus" to mean "an apparatus that introduces pressurized nitrogen into the water/foam concentrate stream to expand the foam and to discharge the expanded foam."

5. "nitrogen"related terms


-----------------------------------------------------------------------
Disputed term                  US Foam                     Defendants
---------------------------------------------------------------------------
consisting             a gas other than              consisting essentially
essentially of         air that includes             means a gas
nitrogen               nitrogen and may              containing more
                       include additional            than 75% nitrogen
Patent `965            gases but does not            (Cummins)
Claim 4                include additional
                       gases that contain
                       highly combustible
                       substances in sufficient
                       concentrations
                       to support
                       combustion
---------------------------------------------------------------------------
gas                    A gas, other than              Any gas containing
comprising             air, that includes             nitrogen, ineluding
nitrogen               nitrogen and may               air (On
                       include additional             Site)
Patent `965            gases.
Claims 1, 9
---------------------------------------------------------------------------
gas consisting         A gas, other than              A gas containing
essentially of         air, that includes             mainly nitrogen,
nitrogen               nitrogen and may               substantially with-out
                       include additional             oxygen (On
Patent `965            gases but does not             Site)
Claim 4                include additional
                       gases that contain
                       highly combustible
                       substances in sufficient



*549
                    concentrations
                       to support
                       combustion.
---------------------------------------------------------------------------
nitrogen              a gas other than               nitrogen as described
containing             air that includes              in the `443
gas                    nitrogen and may               Patent, Column 2,
                       include additional             Line 68 and in the
Patent `965            gases but does not             `375 Patent, Column
Claim 11               include additional             3, Lines 39gases
                       that contain 40                (Cummins)
                       highly combustible
                       substances in sufficient
                       concentrations
                       to support
                       combustion
---------------------------------------------------------------------------

The parties alternately dispute whether the nitrogen that is injected into the foam concentrate mixture can contain oxygen. US Foam seeks to give "gas consisting essentially of nitrogen," "nitrogen containing gas," and "gas comprising nitrogen" equivalent meanings: "a gas, other than air, that includes nitrogen and may include additional gases." US Foam makes a distinction for "gas consisting essentially of nitrogen," by adding the limitation that it does not contain combustible amounts of oxygen. Defendants argue that "gas comprising nitrogen" and "gas consisting essentially of nitrogen" are very different things. Importantly, Defendants contend that "gas comprising nitrogen" can include air, which is 78% nitrogen and contains sufficient oxygen to support combustion. Defendants argue that "comprising" is a broad and open-ended term that can include anything else whereas "consisting essentially of is much narrower and contains very little else. According to Defendants, the patentee knew how to draft narrowly and broadly and chose to do both.
US Foam argues that the patentee expressly disclaimed air as the foam-producing gas. See `965 patent, 4:48-53 ("Conventionally air is used as the gas in forming high expansion foams. However, in view of the need to reduce the oxygen content in the mine at the area involved in the fire, contributing to the oxygen content in the sealed area by the expanded foam is undesirable. Accordingly, a gas consisting essentially of nitrogen is employed as the expanding gas."). In that passage, the patentee describes "gas consisting essentially of nitrogen" as a gas that will not contribute oxygen to the fire. If the foam were to be expanded with air, the substantial concentration of oxygen in the air would "add[] a highly combustible substance to the fire that becomes available to support combustion as the foam breaks down." `965 patent, 4:3-5. The Court construes "gas consisting essentially of nitrogen" and "nitrogen containing gas" to mean "gas containing mainly of nitrogen without other gases in sufficient concentrations to support combustion."
Even though there is no express disclaimer of air for the more broadly-claimed "gas comprising nitrogen," the patentee made clear throughout the specification that the invention does not use air. See `965 patent, 4:3-5; 4:48-53. The Court construes "gas comprising nitrogen" to mean "a gas, other than air, that includes nitrogen and may include additional gases that are not present in sufficient concentrations to support combustion."

6. "directing" and "dispensing" terms


------------------------------------------------------------------------------
Disputed term             US Foam                            Defendants
------------------------------------------------------------------------------
directing said         allowing a fluid or            injecting or placing
stream                 liquid that is moving          the expanded
                       to turn, move,                 foam on a fire
Patent `965            or point undeviatingly
Claims 1, 2            or to follow a
                       straight course
                       with a particular
                       destination or
                       object in view
------------------------------------------------------------------------------
directing              allowing to turn,              flowing the nitrogen
                       move, or point undeviatingly   aerated liquid
Patent `965            or to foam generating
Claim 1                follow a straight              solution as described
                       course with a particular       in the `443
                       destination                    Patent, Column 3,
                       or object in view              Lines 47-60 and in
                                                      the `375 Patent,



*550
                                                      Column 3, Lines
                                                      33-42
------------------------------------------------------------------------------
directs said           allows a mixture               Injecting or
expanded               of nitrogen and                placing on a fire
foam fire suppressant  foam concentrate/liquid        through a
. . .                  mixture                        borehole
through said           to turn, move,
at least one           or point undeviatingly
ingress point          or to follow a
                       straight course
Patent `966            through at least
Claim 13               one entrance
------------------------------------------------------------------------------
directs                allows to turn,                injected or placed
                       move, or point un-deviatingly  on a fire
Patent `965            or to
Claim 13               follow a straight
                       course with a particular
                       destination
                       or object in view
------------------------------------------------------------------------------
dispenser              an apparatus that              an injector that
                       allows fluid to be             places the expanded
                       discharged                     foam on a fire
------------------------------------------------------------------------------
dispensing a           discharging a fire             Injecting or placing
fire suppressant       suppressant that               a low temperature
comprising             includes a foam                nitrogen gasiing
a chilled              concentrate/liquid             fied foam on a fire
nitrogen expanded      mixture gasified               sealed in a coal
foam                   with chilled nitrogen          mine
                       and may inelude
Patent `336            additional
Claim 8                substances
------------------------------------------------------------------------------
dispensing a           discharging a fire             Injecting or placing
fire suppressant       suppressant comprising         a low temperature
comprising             prising chilled nitrogen       nitrogen gasi-filed
chilled                expanded                       foam on a fire
nitrogen expanded      foam to said                   sealed in a coal
foam                   sealed portion of              mine
to said sealed         said confined area
portion of
said confined
area
Patent `336
Claim 8
------------------------------------------------------------------------------
dispensing             discharging                    injecting or
                                                      placing upon
Patent `336
Claims 1, 4
Patent `965
Claim 4
------------------------------------------------------------------------------

The parties have already agreed that "dispensed" means "discharged" and "dispensing" means "discharging." Defendants equate "directing" with "dispensing" without explanation. Different words are presumed to have different meanings. See Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1369 (Fed.Cir.2007). There is no evidence in the intrinsic record to assist the Court in determining the meaning of direct, so the Court resorts to a dictionary. As used in the claims, "directs" means "to dispatch, aim, or guide along a fixed path." See WEBSTER'S THIRD NEW INTERNATIONAL DICTIONARY OF THE ENGLISH LANGUAGE UNABRIDGED 640 (1993) ("to dispatch, aim, or guide usu. along a fixed path").
Dispenser appears by itself only in claims 11 and 13 of the `965 patent. Claim 11 recites, "wherein said expanded foam fire suppressant is expanded by a dispenser that proportions nitrogen containing gas into a water/foam concentrate stream thereby to initiate expansion of said foam." '965, Claim 11. The dispenser of claim 11 operates exactly as the diffuser/dispenser described in the specification; the apparatus expands and discharges the foam. See `965 patent, 4:62-65. The Court construes dispenser to mean "an apparatus that expands and discharges foam."

7. "foam"related terms


----------------------------------------------------------------------------------
Disputed term                US Foam                         Defendants
chilled nitrogen       foam concentrate/liquid        to lower the temperature;
expanded               mix-ture                       to cool as
foam                   gasified with                  compressed nitrogen
                       chilled nitrogen               is chilled
Patent `336                                           when released as
Claims 1, 2, 3,                                       it expands the
8, 9, 10,12                                           foam concen-trate/liquid
                                                      mixture
                                                      as mixed with
                                                      chilled nitrogen,
                                                      as described in the
                                                      `443 Patent at
                                                      Column 3, Lines
                                                      47-60 and in the
                                                      `375 Patent,
                                                      Column 3, Lines
                                                      39-41
----------------------------------------------------------------------------------
class A type           a foam concentrate             readily available
foam                   for extinguishing              commercial foaming
concentrate            fires in-volving               agents; foaming
                       ordinary                       agents used in
Patent `336            combustible materials,         fire fighting
Claim 13               such as                        (A.F.F.F., high
                       wood, cloth, paper,            expansion foam,
                       rubber, as well as             protein foam), sulfate
                       many plastic                   soap, or common
                                                      dishwashing
                                                      detergents as described
                                                      in the `375



*551
                                                      Patent, Column 3,
                                                      Lines 4-10
----------------------------------------------------------------------------------
expand said            increase the volume            increase volume
foam concentrate       of the foamable                by gasification
                       substance
Patent `965
Claims 1, 9
----------------------------------------------------------------------------------
expanded               a mixture of nitrogen          an expanded nitrogen
foam fire suppressant  and foam                       aerated liquid
                       concentrate/liquid             foam generating
                       mixture                        solution as described
Patent `965                                           in the `443
Claims 1, 2, 11,                                      Patent, Column 3,
13                                                    Line 61 thru Column
                                                      4, Line 3 and
                                                      in the `375 Patent,
                                                      Column 3, Lines
                                                      43-62
----------------------------------------------------------------------------------
expanded               a mixture of nitrogen          foam gasified with
foam                   and foam                       a gas or an evaporated
                       concentrate/liquid             rated liquid
Patent `336            mixture
Claim 1
Patent `965
Claims 1, 2, 4,
13
----------------------------------------------------------------------------------
foam                   a mixture of foam              a foamable solution
concentrate/liquid     concentrate and a              mixed together
                       non-flammable                  with a non-flammable
mixture                liquid                         fluid
Patent `336
Claims 1, 3
Patent `965
Claims 1, 9
----------------------------------------------------------------------------------
foam                   a foamable                     a foamable
concentrate            substance                      solution
Patent `336
Claims 1, 2, 13,
14
Patent `965
Claims 1, 4, 9
----------------------------------------------------------------------------------
nitrogen expanded      mixture of chilled             foam gasified with
foam                   nitrogen and foam              lowtemperature
chilled fire           concentrate/liquid             nitrogen that is
suppressant            mixture                        used to extinguish
                                                      a fire
Patent `336
Claim 1
----------------------------------------------------------------------------------
nitrogen expanded      a mixture of nitrogen          an expanded nitrogen
foam                   and foam                       aerated liquid
fire suppressant       concentrate/liquid             foam generating
                       mixture                        solution as described
                                                      in the `443
Patent `965                                           Patent, Column 3,
Claim 4                                               Line 61 thru Column
                                                      4, Line 3 and
                                                      in the `375 Patent,
                                                      Column 3, Lines
                                                      43-62
----------------------------------------------------------------------------------
nitrogen               foam concentrate/liquid        foam gasified with
expanded               mixture                        nitrogen
foam                   gasified with
                       nitrogen
Patent `336
Claims 1, 2, 3,
8, 9,10,12
----------------------------------------------------------------------------------
nonflammable           a fluid or liquid              a non-combustible
liquid                 that is not easily             fluid
                       ignited
Patent `336
Claims 1,13
Patent `965
Claims 1, 4, 9
----------------------------------------------------------------------------------

The parties dispute whether expanded foam is merely a mixture or must be "gasified" or "aerated." US Foam relies on the ordinary meaning of "expand" to argue that to expand foam is "to increase the volume of" foam. The chart above lists the disputed terms as the parties identified them. The Court distills the voluminous collection of disputed terms to the following list:
 Chilled nitrogen expanded foam
 Expanded foam fire suppressant
 Expand said foam concentrate
 Class A type foam concentrate
 Nonflammable liquid
 Foam concentrate/liquid mixture
 Foam concentrate
The parties dispute whether foam concentrate can be a substance (i.e., one type of material), or must be a solution (i.e., a mixture of two or more liquids). Nothing in the claims, specification, or prosecution history suggest that a foam concentrate is limited to a solution. Substance encompasses a solution as well as any other single-substance foam concentrate, such as a powder. The Court construes "foam concentrate" to mean "foamable substance."
The parties essentially agree to the definition of "foam concentrate/liquid mixture." The Court construes "foam concentrate/liquid mixture" to mean "foamable substance mixed with non-flammable liquid."
*552 With respect to the "expanded" terms, U.S. Foam offers ordinary meaning arguments that are not helpful to the Court. US Foam asserts that "nitrogen expanded foam" is "gasified with nitrogen," but does not agree that "expanded foam" is gasified at all. The foam, as taught by the claims and specification, is gasified; it becomes foam through the gasification or aeration process. What is novel about the invention, according to the patentee, is not simply that it expands foam (i.e., increases it in size). The invention's novelty is that it expands foam by gasifying it without adding oxygen to the site of a fire. To construe "expand" without tying it to the foam creation process gasificationwould impermissibly broaden the scope of the claims. The parties agree that, at least as used in the disputed phrase "expand said foam concentrate," the word "expand" means "to increase in volume." Therefore, "expanded foam fire suppressant" is construed to mean "foam concentrate/liquid mixture that is increased in volume by gasifying it with said nitrogen." The Court construes "expand said foam concentrate" to mean "to increase the volume of said foam concentrate by gasifying it with said nitrogen." The parties agree that "chilled" means "lowered in temperature." The Court therefore construes "chilled nitrogen expanded foam" to mean "foam that is lowered in temperature and increased in volume by gasifying it with nitrogen".
The parties dispute whether "Class A type foam concentrate" should be defined by what it is or what it does. US Foam argues that Class A fires are those involving "ordinary combustible materials," and a Class A foam concentrate is one that is suitable for extinguishing those types of fires. Defendants argue that the construction should specify the types of agents that extinguish Class A fires. If the patentee wanted to identify specific agents, he was free to draft the claims in such a manner. Rather, the patentee drafted the claim to identify foam by the fire class for which it is intended. The patentee is entitled to broadly claim his invention so that he captures all manner of agents without having to identify each individually.
US Foam uses a flawed approach toward reading the dictionary definition. US Foam takes the meaning of Class A and tries to add additional materials that were not included in the original definition: "rubber, as well as many plastic[s]." The complete sentence in the definition reads, "Class A includes fires in combustible materials, such as wood, paper, and cloth where the quenching and cooling effect of quantities of water or of solutions containing a high percentage of water is of first importance." The Court will use the complete definition and construe "class A type foam concentrate" to mean "a foam concentrate that is suitable for extinguishing Class A fires, which include fires in combustible materials, such as wood, paper, and cloth where the quenching and cooling effect of quantities of water or of solutions containing a high percentage of water is of first importance."
The parties have not briefed "nonflammable liquid." The definition for "nonflammable" is "incapable of being easily ignited and of burning with extreme rapidity." WEBSTER'S THIRD NEW INTERNATIONAL DICTIONARY OF THE ENGLISH LANGUAGE UNABRIDGED 1537 (1993). The Court construes "non-flammable liquid" to mean "a liquid that is incapable of being easily ignited and of burning with extreme rapidity."

8. "mixing" and "introducing" terms


-------------------------------------------------------------------------------
Disputed term                     US Foam                 Defendants
-------------------------------------------------------------------------------
Introduce said               allowing to be           inject or place
chilled nitrogen             added said chilled       foam on a fire



*553
expanded                     nitrogen expanded
foam                         foam
Patent `336
Claim 1
-------------------------------------------------------------------------------
introduce                    allow to be               added inject or place
                                                       foam on a fire
Patent  `336
Claim 1
-------------------------------------------------------------------------------
introducing a                allowing to be           adding compressed
gas comprising               added to said            nitrogen
nitrogen                     stream a gas, other      to the liquid
under pressure               than air, that           stream
to said                  includes nitrogen
stream                       and may include
                             additional gases
Patent `965                  under pressure
Claims 1, 9
-------------------------------------------------------------------------------
introducing a                allowing to be           adding compressed
gas consisting               added a gas consisting   nitrogen
essentially of               essentially              to a liquid stream
nitrogen under               of nitrogen under
pressure                     pressure
Patent `965
Claim 4
-------------------------------------------------------------------------------
introducing                  allowing to be           mixing as described
                             added                    in the `443
Patent `965                                           Patent, Column 2,
Claims 1, 4, 9                                        Lines 67-68 and
                                                      Column 3, Lines
                                                      1-3, 30-46 and 60-68
                                                      and in the `375
                                                      Patent, Column 3,
                                                      Lines 33-42
-------------------------------------------------------------------------------
mixing said            combining nitrogen       combining nitrogen
nitrogen               with another
                                                      substance
Patent `336
Claim 1
-------------------------------------------------------------------------------
mixing                       allowing the bringing    introducing a gaseous
                             together of              aeration
Patent `336                                           agent into a liquid
Claim 1                                               foam generating
                                                      solution as described
                                                      in the `443
                                                      Patent, Column 3,
                                                      Lines 60-68, Column
                                                      5, Lines 25-29
                                                      and in the `375
                                                      Patent, Column 3,
                                                      Lines 33-42
-------------------------------------------------------------------------------

For the identified "mixing" and "introducing" terms, the Court need only construe "mixing" and "introducing." The remainder of the identified phrases does not require construction because the Court is construing the constituent terms.
The parties propose wildly different constructions for "mixing," neither of which can be correct. US Foam proposes a definition that allows mixing to take place but does not require the step. Defendants argue that U.S. Foam's use of "allowing" writes the step out of the claim. Defendants offer proposals, on the other hand, with an eye toward their invalidity case as their definitions incorporate pinpoint cites to unrelated prior art patents. The Court cannot adopt a construction that lacks intrinsic support and also invalidates the claims. See Phillips v. AWH Corp., 415 F.3d 1303, 1327 (Fed.Cir.2005) (en banc) ("[W]e have limited the maxim [of construing a claim to preserve its validity] to cases in which `the court concludes, after applying all the available tools of claim construction, that the claim is still ambiguous.'" (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 911 (Fed.Cir.2004))).
The Court sees from comparing the proposals that the parties agree that "mixing said nitrogen" means, at least in part, "combining nitrogen." As terms should be given the same meaning across different claims in a patent, see Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1087 (Fed.Cir.2009) (quoting PODS, Inc. v. Porta Stor, Inc., 484 F.3d 1359, 1366 (Fed.Cir.2007)). The Court construes "mixing" to mean "combining." Likewise, the parties agree, at least in part, that "introducing" means "adding." The Court construes "introducing" to mean "adding" and "introduce" means "add."

9. "stream"related terms


------------------------------------------------------------------------------------
Disputed term                        US Foam                             Defendants
------------------------------------------------------------------------------------
creating a               allowing a fluid or            pressurizing a
flowing                  liquid that is moving          foamable solution
stream                   to be brought                  to cause it to flow
                         into existence and             as described in the
Patent `965              causing said fluid             `443 Patent, Column
Claim 4                  or liquid to flow              3, Lines 46-68
                                                        and in the `375



*554
                                                        Patent, Column 3,
                                                        Lines 28-42
------------------------------------------------------------------------------------
into a stream            into a fluid or liquid         the addition of a
                         that is moving                 foamable agent
Patent `965                                             into pressurized
Claim 1                                                 water as described
                                                        in the `443 Patent,
                                                        Column 2, Lines
                                                        49-53 and in the
                                                        `375 Patent, Column
                                                        3, Lines 1-13
said stream              said fluid of liquid           the addition of a
                         that is moving                 foamable agent
Patent `965                                             into pressurized
Claim                                                   water as described
                                                        in the `443 Patent,
                                                        Column 2, Lines
                                                        49-53 and in the
                                                        `375 Patent, Column
                                                        3, Lines 1-13
------------------------------------------------------------------------------------
stream of                a mixture of foam              the addition of a
foam concentrate/liquid  concentrate/liquid             foamable agent
                         mixture that is                into pressurized
mixture                  moving                         water and pressurizing
                                                        the foamable
Patent `965                                             solution to
Claim 9                                                 cause it to flow
------------------------------------------------------------------------------------
stream of                mixture of nitrogen          a moving flow of
foam fire                and foam                     gasified fire fighting
suppressant              concentrate/liquid           foam
                         mixture that is
Patent `965              moving
Claims 1, 9
------------------------------------------------------------------------------------

The parties agree that "stream" means "a fluid or liquid that is moving." Defendants argue that the movement must come from pressurization and not gravity. The claims already recite pressure limitations. For example, the `965 patent, Claim 1 recites that "nitrogen under pressure" is added to the foam concentrate mixture to create the fire suppressant foam. See also `965 patent, claim 4 ("said flowing stream being maintained at a pressure of at least 90 psi, introducing a gas consisting essentially of nitrogen under pressure of at least 100 psi. . . ."); `965 patent, claim 9 ("introducing a gas comprising nitrogen under pressure"). Defendants' proposal adds an unnecessary limitation.
The Court adopts the following constructions:


creating a flowing stream                          making a flowing stream
-------------------------------------------------------------------------------------
into a stream                                      into a stream
-------------------------------------------------------------------------------------
said stream                                        said stream
-------------------------------------------------------------------------------------
stream of foam                                     stream of foam
concentrate/liquid                                 concentrate/liquid
mixture                                            mixture
-------------------------------------------------------------------------------------
stream of foam fire                                moving flow of expanded
suppressant                                        foam fire suppressant


10. "chilling"-related terms


-------------------------------------------------------------------------------------
Disputed                    term US Foam                           Defendants
-------------------------------------------------------------------------------------
chilled prior           chilled prior                 to the to cool or have
to admixture            act of mixing                 cooled to a cold
                                                      temperature or
Patent `336                                           liquid phase before
Claim 3                                               the foam concentrate
                                                      is being
                                                      mixed with
                                                      nitrogen
-------------------------------------------------------------------------------------
chilling                lowering the                  to cool or have
nitrogen gas            temperature of                cooled to a cold
                        nitrogen gas                  temperature or
Patent `336                                           liquid phase
Claim 1
-------------------------------------------------------------------------------------

The parties agree that "chilling" means "lowering the temperature" and that "chilled" means "lowered in temperature." The Court incorporates the parties' agreement and adopts the following constructions:


-------------------------------------------------------------------------------------
chilled prior to admixture                          lowered in temperature
                                                    prior to the act of mixing
-------------------------------------------------------------------------------------
chilling nitrogen gas                               lowering the temperature
                                                    of nitrogen gas
-------------------------------------------------------------------------------------


11. "proportioning" terms


-------------------------------------------------------------------------------------
Disputed term                    US Foam                                 Defendant
-----------------------------------------------------------------------------------
proportioned           adjusted in relation           mixed in a measured
                       to the amount                  ured amount
Patent `965            of other substance
Claims 3,12            in the
                       mixture
-------------------------------------------------------------------------------------
proportioning          allowing the                   mixing the foamable
a foam concentrate     amount of a foam               solution with a
into a                 concentrate to be              noncombustible
stream of              adjusted in relation           fluid in a measured
nonflammable           to the amount                  ured amount
liquid                 of nonflammable
                       liquid in a stream
Patent `965
Claims 1, 9
-------------------------------------------------------------------------------------
Proportioning          allowing the mixing            together
                       amount of a substance          in a measured
Patent `336            included                       amount
Claim 1                within a mixture
Patent `965            to be adjusted in



*555
Claims 1, 4, 9         relation to the
                       amount of other
                       substances in the
                       mixture
-------------------------------------------------------------------------------------
proportions            Allows the amount              [See Proportioned
                       of a substance included        and Proportioning]
Patent `965            within a
Claim 11               mixture to be adjusted
                       in relation
                       to the amount of
                       other substances
                       in the mixture
-------------------------------------------------------------------------------------
proportioning allowing the mixing together

The parties primarily dispute whether proportioning is permissible, rather than mandatory. They also dispute whether proportioning is "mixing in a measured amount" or "adjusting in relation to other [substances]." As previously explained, "allows" or "allowing" are not correct. What largely remains for the Court to decide is whether proportioning is adjusting or mixing.
The specification explains that proportioning foam concentrate and water can be accomplished by adjusting water pressure relative to foam concentrate. `336 patent, 7::59-65. It also explains that the foam concentrate and water can be pre-mixed in a container for small fires. `336 patent, 7:53-57. Claim 3 of the `965 patent recites specific pressures. The specification also explains that the foam concentrate are combined as ratios: "The foam concentrate. . . is normally proportioned with water in percentages ranging from about 0.1% by volume foam concentrate to about 1% by volume foam concentrate." `336 patent, 7:44-51. See also `965 patent, 4:28-31 ("The foam concentrate is proportioned with water in percentages ranging from about 0.1% by volume to about 1% by volume depending on the hardness of the water."). Claim 6 of the `965 patent also recites specific percentages.
Looking to the claim language, the relevant limitations use "proportioning . . . into" to produce a mixture. For example, Claims 1 and 9 of the `965 patent recite, "proportioning a foam concentrate into a stream of non-flammable liquid to form a stream of foam concentrate/liquid mixture." Defendants' verb of choice, "mixing," seems redundant considering the ultimate product is a "mixture." US Foam's verb choice of "adjusting" is inappropriate for the pre-mixed embodiment. The verb "measuring," however, is instructive and more accurately describes how the foam concentrate/liquid mixture is created for each of the embodiments. The embodiments described include "premix[ing] the foam concentrate and water in a suitable container," Venturi "line proportioning devices" that measure the flow rate of the foam and water, and "`around the pump' proportioners." `336 patent, 7:51-8:15. The word "measuring" reflects premixing, adjusting the flow rate, and manipulating the concentrations, as recited in Claims 3 or 6.
The Court construes "proportioning" to mean "measuring," "proportioned" to mean "measured," and "proportions" to mean "measures."

12. "ingress" terms


-------------------------------------------------------------------------------------------
Disputed term                      US Foam                Defendants
-------------------------------------------------------------------------------------------
one ingress            an entrance to an              borehole to the
point to said an       area of a mine                 area of the coal
area of said           shaft that is on               mine on fire
mine shaft involved    fire
in fire
Patent `965
Claims 1, 9
-------------------------------------------------------------------------------------------
one ingress            one entrance                   borehole or other
point                                                 place where nitrogen
                                                      expanded
Patent `965                                           foam is injected or
Claims 1, 9, 13                                       placed on a fire
-------------------------------------------------------------------------------------------
through said           through at least               the borehole
at least one           one entrance                   where the expanded
ingress point                                         foam is placed
                                                      on a fire
Patent `965
Claims 1, 9
-------------------------------------------------------------------------------------------
seal includes          closure includes at            an air tight firesaid
at least               least one entrance             proof barrier to
one foam ingress       for the introduction           confine an area of
point                  of foam                        the coal mine on
                                                      fire, except for the



*556
Patent `965                                           ingress point identified
Claim 14                                              in this claim
-------------------------------------------------------------------------------------------

The parties have agreed that "ingress point," as recited in claim 1 of the `965 patent, means "an entrance." The parties appear to dispute these terms, but provide no argument for the Court to consider. Incorporating the parties' agreement regarding "ingress point" and its constructions for other constituent terms, the Court adopts the following constructions:


-------------------------------------------------------------------------------------------
one ingress point                            one entrance
-------------------------------------------------------------------------------------------
through said at least one                    through at least one
ingress point                                entrance
-------------------------------------------------------------------------------------------
seal includes said at least                  closure includes at least one
one foam ingress point                       entrance for the introduction
                                             of foam
-------------------------------------------------------------------------------------------


13. Disputed terms that the parties have not briefed


-------------------------------------------------------------------------------------------
Disputed term                    US Foam                            Defendants
-------------------------------------------------------------------------------------------
flooding said            allowing an area of                     to fully cover the
area of said             the mine shaft                          coal mine fire with
mine shaft               that is on fire to                      water prior to injecting
involved in the          be covered with                         or placing
fire with                water                                   the foam mixture
Water                                                            on the combustible
                                                                 material
Patent `965
Claim 2
-------------------------------------------------------------------------------------------
forming                  allowing to be                          producing a foamable
                         made                                    solution as in
Patent `336                                                      the `375 Patent,
Claims 1, 9                                                      Column 3, Lines
                                                                 4-10 and Lines
                                                                 21-23 and the `443
                                                                 Patent, Column 3,
                                                                 Lines 60-68
-------------------------------------------------------------------------------------------
providing                allowing to be                          constructing at
                         supplied                                least one entry
Patent `965                                                      point to the area
Claims 1, 9                                                      of the mine involved
                                                                 in the fire
-------------------------------------------------------------------------------------------
drawing out              to remove at a                          removing air from
at least a portion       minimum a part of                       the confined area
of the                   the ambient atmosphere                  involved with the
ambient atmosphere       from an                                 mine fire
from                     area that is on fire
said area involved       after it has been
in fire                  allowed to be
after it has             made firmly closed
been sealed              or secured
Patent `965
Claim 10
-------------------------------------------------------------------------------------------
reduction of             lowering of the                         in a coal mine fire,
the surface              surface temperature                     reducing the borehole
temperature              of material                             temperatures
of combustible           capable of burning                      to 90° F or less
material in              in the sealed portion
said sealed              to approximately
portion to               90° F
about 90° F
Patent `336
Claim 8
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thereby to               to reduce the                           to reduce the borehole
lower the                temperature at                          temperature
temperature              the surface of the                      readings for
at the surface           combustible material                    the combustible
of combustible           at the area                             material in the
material at mine
said area
Patent `336
Claim 1
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substantially            close off contact or                    a layer of expanded
close off contact        almost close off                        foam between
between                  contact to material                     combustible material
combustible              capable of burning                      and the ambient
material involved                                                bient atmosphere
in fire
and ambient
atmosphere
Patent `965
Claim 4
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substantially            close off contact or                    to seal a confined
close off contant        almost close off                        area of a coal mine
between                  contact between                         involved with a
combustible              the ambient atmosphere                  fire
material involved        and the
in fire                  material capable
and ambient              of burning that is
atmosphere               on fire
Patent `965
Claim 4
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For seven disputed terms and phrases, the parties failed to help the Court understand their positions with the benefit of briefing or oral argument. Even though the parties have not identified the substance of their positions or the real dispute, the Court must nonetheless fulfill its duty to determine the proper scope of the claims. See 02 Micro Intern. Ltd. v. Beyond Innovation Technology Co., Ltd., 521 F.3d 1351, 1360-61 (Fed.Cir.2008) (requiring the Court to resolve all real disputes because "claim construction requires the court to determine what claim scope is appropriate in the context of the patents-in-suit").
*557 As with other terms, three of U.S. Foam's proposals use "allowing," suggesting that certain steps of the methods need only be permitted and not necessarily be performed. The Court rejects any construction that transforms a required method step into an optional one. The Court will not include "allowing" in its construction for these terms.
Defendants' proposal for the "flooding" term incorporates the remainder of the claim limitation into the disputed phrase. Claim 2 of the `965 patent reads, "The method of claim 1 further including the step of flooding said are of said mine shaft involved in the fire with water prior to directing said stream containing said expanded foam fire suppressant." `965 Patent, claim 2. The additional phrase, "prior to injecting or placing the foam mixture on the combustible material" in Defendants' proposal merely restates the remainder of the claim. The parties also appear to dispute whether flooding requires that the mine shaft be "fully" covered. US Foam relies on a dictionary definition, but chooses the one definition that requires the least amount of water. For example, other definitions recite "to become filled to excess with some fluid", "to cover or overwhelm", or "to fill more or less completely with water or other fluid." Based on both parties proposed terms, however, the parties apparently agree that the mine shaft must be covered with water and need not be filled with water. The Court construes "flooding said area of said mine shaft involved in the fire with water" to mean "covering the surfaces of the mine shaft that are on fire with water."
Defendants' proposal for "forming" impermissibly relies upon other, unrelated patents. The definition of "form" is "to give form or shape to: FRAME, CONSTRUCT, MAKE, FASHION." WEBSTER'S THIRD NEW INTERNATIONAL DICTIONARY OF THE ENGLISH LANGUAGE UNABRIDGED 893 (1993). The Court construes "forming" to mean "making or constructing."
Defendants' proposal for "providing" incorporates the remainder of the claim limitation into the definition of providing. Claim 1 of the `965 patent recites "providing at least one ingress point to said an area of said mine shaft involved in fire." Defendants' proposal would make the trailing language superfluous. US Foam's use of "allowing" is equally impermissible. The parties also dispute whether an ingress point is "constructed" or "supplied." They offer little assistance to the Court on this point. The specification uses the word "constructing" with respect to the seals, which is where the ingress point is located in at least one embodiment. `336 patent, 4:46-47. In the first example, the specification explains that water pipes served as the ingress point and were "installed." `336 patent, 8:34-51. The definition of "provide" is "to supply for use." WEBSTER'S THIRD NEW INTERNATIONAL DICTIONARY OF THE ENGLISH LANGUAGE UNABRIDGED 1827 (1993). While constructing may be appropriate in some scenarios, constructing is narrower than supplying as it implies more planning and labor than supplying. The Court can envision supplying a hole in a mine without constructing it. The Court construes "providing" to mean "supplying."
With respect to the "drawing out" phrase, the Court has construed all of the constituent terms except the phrase "drawing out at least a portion of the ambient atmosphere." The parties agree that "to draw out" means "to remove." The parties appear to dispute whether "ambient atmosphere" means "air." US Foam did not offer a definition for "ambient atmosphere" while Defendants propose "air." The specification explains that *558 the conventional method of fighting a coal mine fire includes the step of "drawing out as much air as possible from the involved areas." `336 patent, 4:49-50. Later, it explains that "it is preferred that the atmosphere in the sealed area is drawn out so as to reduce as much as possible the oxygen in the sealed area to limit or slow the progress of the fire." `336 patent, 5:4-8. The remainder of Claim 10 of the `965 patent further explains that the purpose of the "drawing out" is to "thereby . . . reduce the amount of oxygen and gaseous fuel available to the fire." `965 patent, claim 10. Although conventionally the method would draw out air, the patentee chose not to so limit his invention to a single type of gaseous fuel. The Court construes "drawing out at least a portion of the ambient atmosphere" to mean "removing at least some of the ambient atmosphere, such as air, from said area involved in fire after it has been sealed."
The parties appear to dispute, for the two "surface temperature" claim limitations whether the temperature must be measured using a borehole reading. Defendants offer extrinsic evidence to support their proposal that the temperature readings can be made only at a borehole. Nowhere in the claims or specification, or as far as the Court can determine, in the prosecution history does the patentee use the word "borehole." Necessary to the invention is the reduction in temperature of the surface of the coal mine, not the borehole. The Court construes "reduction of the surface temperature of combustible material in said sealed portion to about 90° F" to mean "lowering of the surface temperature of material capable of burning in the sealed portion to approximately 90° F." The Court construes "thereby to lower the temperature at the surface of combustible material at said area" to mean "in order to lower the temperature at the surface of the combustible material at said area."
The parties dispute the meaning of the phrase "substantially close off contact between combustible material involved in fire and ambient atmosphere," each party offering two different constructions for this term. Defendants argue that "substantially close off contact" means the same thing as seal. Claim 4 of the `965 patent teaches that the expanded foam fire suppressant is what "substantially closes off contact" between the atmosphere and the burning material. `965 patent, claim 4. There is no support for Defendants' proposal that the foam creates a seal. The foam creates a barrier to prevent air, or other gaseous fuel, from feeding the fire. The Court construes "substantially close off contact between combustible material involved in fire and ambient atmosphere" to mean "create a barrier between combustible material involved in fire and ambient atmosphere."

B. The `558 patent

1. "a fire extinguishing chemical of a gas type that comprises argon and nitrogen"


------------------------------------------------------------------------------
Disputed term                     On Site                         US Foam
------------------------------------------------------------------------------
a fire extin           A gas that contains             A fire extinguishing
guishing chemical      argon and nitrogen              chemical of a
of a gas               optionally                      gas type that includes
type that comprises    with other                      nitrogen
prises argon           components                      and argon and
and nitrogen                                           may include
                                                       additional gases,
                                                       Claims 1, 6 however the
                                                       source of the
                                                       argon is a source
                                                       other than the argon
                                                       that is isolated
                                                       from air during
                                                       generation of the
                                                       nitrogen.
------------------------------------------------------------------------------

The parties dispute whether the gas must include nitrogen and argon, and whether the argon gas, if included, must have an independent source. On Site relies on the specification to argue that the *559 fire extinguishing chemical can use a gas that is selected from argon, nitrogen, or other component. See `558 patent, 1:46-59. On Site also argues that neither the claims nor the specification require limiting argon to an independent source.
US Foam argues that the patentee disavowed the scope of a nitrogen-air mixture when it amended the claims to overcome prior art. As originally drafted, the claim recited "a fire extinguishing chemical of a gas type comprising at least one member selected from a group consisting of argon, nitrogen, and carbon dioxide." Amendment, February 25, 2005, at p. 2. The patentee amended the claim to overcome the examiner's rejection because "[the prior art reference] shows a device and teaches [a] method of extinguishing a fire using a gas type chemical, nitrogen using a foam formed by water containing a synthetic surface-active agent." Office Action, Nov. 29, 2004, at 4. Amending the claim, the patentee distinguished over the prior art reference, explaining that it "fails to disclose the use of a fire extinguishing chemical that comprises argon and nitrogen." Amendment, Feb. 25, 2005, at 9-10. US Foam argues that On Site's proposal would permit air, which would recapture the prior art that included a nitrogen-air mixture.
"Just as prosecution history estoppel may act to estop an equivalence argument under the doctrine of equivalents, positions taken before the PTO may bar an inconsistent position on claim construction under § 112, ¶ 6." Ballard Medical Products v. Allegiance Healthcare Corp., 268 F.3d 1352, 1359 (Fed.Cir.2001) (quoting Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1457 (Fed.Cir.1998)). According to the examiner, the prior art taught mixing nitrogen with the air, such that "the addition of the nitrogen into the system would inherently reduce the oxygen concentration below 21% and would normally reduce the[] oxygen concentration to ranges claimed." Office Action, Dec. 1, 2004, at 4. [Dkt. 76-7] The patentee amended the claims to require nitrogen and argon and explained that the prior art did not disclose using both nitrogen and argon to reduce the concentration of oxygen. If the argon in this limitation was the argon in air, then the argon would serve no purpose to reduce the concentration of oxygen as it would necessarily be accompanied by the oxygen in gas. The Court agrees that the gas cannot be air. The Court finds no support for U.S. Foam's proposal, however, that further limits the source of the argon such that it cannot be created or generated from the air. The Court construes the phrase to mean, "a gas other than air that contains argon and nitrogen, optionally with other components."

2. "foams have the strength in such an extent that, after they have discharged, they are not broken until reaching a fire and, upon contact to the fire, they are broken"


----------------------------------------------------------------------------------------
Disputed term                       On Site                               US Foam
----------------------------------------------------------------------------------------
foams have the         The cells of the               The foams have
strength in            expanded foam                  sufficient structural
such an extent         survive being                  integrity to
that, after they       discharged, but                resist breaking
have discharged,       break up upon                  apart after being
they                   making contact                 discharged and
are not broken         with fire.                     before reaching
until reaching a                                      the fire thus allowing
fire and, upon                                        the foams to
contact to the                                        carry the gas to
fire, they are                                        the fire, but lack
broken Claim 2                                        the structural
                                                      integrity to resist
                                                      breaking apart
                                                      upon contact with
                                                      the fire and break
                                                      apart upon contact
                                                      with the fire thus
                                                      releasing the gas
                                                      contained in the
                                                      foam, which then
                                                      extinguishes the
                                                      fire
----------------------------------------------------------------------------------------

The parties dispute the purpose of the cells. US Foam argues that the foam is created, "thus releasing the gas contained in the foam, which then extinguishes *560 the fire." On Site uses the word "cells" to describe the structure of the foam, with which U.S. Foam disagrees. At the hearing, the parties conceded that the proposals meant essentially the same thing. The Court construes the phrase to mean "the structural integrity of the foam bubbles is strong enough to survive being discharged, but weak enough to break apart after making contact with fire."

VI. Conclusion
The court adopts the constructions set forth in this opinion for the disputed terms of the `965, `336, and `558 patents. The parties are ordered that they may not refer, directly or indirectly, to each other's claim construction positions in the presence of the jury. Likewise, the parties are ordered to refrain from mentioning any portion of this opinion, other than the actual definitions adopted by the court, in the presence of the jury. Any reference to claim construction proceedings is limited to informing the jury of the definitions adopted by the court.
It is SO ORDERED.
NOTES
[1]  The defendants include Allied International Emergency, LLC, Mel Hammit, and TyMcKee (collectively "Allied"), Cummins Industries, Inc., CASFSCO, and Mark Cummins (collectively "Cummins"), and On Site Gas Systems, Inc. ("On Site"). This memorandum will refer to all of these parties as Defendants, collectively.
[2]  The `336 specification uses the word "linked" rather than "limited." The context of this sentence and the corresponding sentence in the `965 specification make clear to the Court that the intended word was "limited."
